OPPOSITION No B 3 070 388

Flowil International Lighting (Holding) BV, Prins Bernhardplein 200, 1097JB Amsterdam, Netherlands (opponent), represented by Curell Suñol S.L.P., Via Augusta 21, 08006 Barcelona, Spain (professional representative)

a g a i n s t

Polar Beheer B.V., Wolvegastraat 86, 5036 AJ Tilburg, Netherlands (applicant), represented by Merk-Echt B.V., Keizerstraat 7, 4811 HL Breda, Netherlands (professional representative).

On 14/02/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 070 388 is partially upheld, namely for the following contested goods and services:

Class 11: Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes; Solar thermal collectors [heating]; Solar thermal collectors [heating]; Solar storage equipment; Heating installations and Solar energy powered heating installations; Heat pumps; Heat exchangers, not parts of machines; Lighting installations, lighting apparatus and lighting fixtures; Lamps; Light objects; Garden lighting; light poles; Parts for the aforesaid goods included in this class.

Class 35: Business mediation in the purchase and sale, import and export, and wholesaling and retailing of apparatus for lighting; Business mediation in the purchase and sale, export-import, and wholesaling and retailing in relation to lighting installations, lighting equipment and light fittings, lamps, lighting objects, garden lighting, light poles, light boxes, luminous sign panels, luminous billboards (advertising boards), solar cells, solar wafers and parts of the aforementioned goods.

2. European Union trade mark application No 17 929 809 is rejected for all the above goods and services. It may proceed for the remaining services, namely:

Class 35: Business mediation in the purchase and sale, import and export, and wholesaling and retailing of chargers for rechargeable apparatus, batteries and battery chargers, including for electric vehicles, charging stations and electric charging points, including for electric vehicles, power banks, electric cables, conduits and wires and parts for the aforesaid goods.

as well as for all non-contested goods and services in Classes 6, 19 and 35.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 17 929 809 ‘SOLVANA’, namely against all the goods in Class 11 and some of the services in Class 35. The opposition is based on European Union trade mark registration No 3 220 241 and European Union trade mark registration No 5 636 071 both for the word mark ‘SYLVANIA’. The opponent invoked Article 8(1)(b) and Article 8(5) 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.

Since the two earlier rights are for the word mark ‘SYLVANIA’ any reference to ‘earlier rights’, ‘earlier (trade) marks’ or ‘earlier registrations’ in plural shall be understood in singular and vice versa, unless the text explicitly provides otherwise.

a) The goods and services

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

European Union trade mark registration No 3 220 241:

Class 9: Starters for electric lamps; electronic starters for fluorescent lamps; ballasts for lamps and lighting fittings; electrical transformers for use with lighting; lighting transformers; UV photocells; parts and fittings for the aforesaid goods.

Class 10: Lights and lamps for curative, medical, surgical and therapeutical purposes; parts and fittings for the aforesaid goods.

Class 11: Apparatus and installations for lighting; fluorescent light tubes; light bulbs; lamps; filaments for lamps; arc lamps; electric discharge tubes for lighting; lamp casings; lamp glasses, lamp hanging supports, lamp reflectors, lampshades; luminous tubes for lighting; sockets for electric lights; torches; search lights; lights and lamps for cosmetic purposes; parts and fittings for the aforesaid goods.

European Union trade mark registration No 5 636 071:

Class 9: Starters for electric lamps, electronic starters for fluorescent lamps, ballasts for lamps and lighting fittings, electrical transformers for use with lighting, lighting transformers, UV photocells; computer software, computer discs and CD ROMs featuring information relating to lighting, lighting products, lighting design and lighting technology; radio transmitting and radio receiving apparatus; television transmitting and television receiving apparatus; sound recording, sound transmitting and sound reproducing apparatus; computers; computer and video monitors; computer-based control 'apparatus; combinations of two or more of any of the aforesaid goods; voltage surge protectors; light meters; electro-mechanical and electronic temperature and/or timer controls; controllers for heating, ventilating and/or cooling systems; thermostats, clock thermostats, programmable thermostats, programmers, timers, comfort controls, temperature sensors, thermostatic radiator valves; wiring boxes and connectors for any of the above; transformers; electrical and electronic instruments and apparatus, all for testing, measuring, recording, analysing or control; switchgear, circuit breakers; electrical circuit components, relays, reactors, thermistors and rectifiers; component parts for all the aforesaid goods.

Class 11: Apparatus and installations for lighting; contact tracks for lighting; lighting tracks; luminaires; fluorescent light tubes; light bulbs; lamps; filaments for lamps; arc lamps; electric discharge tubes for lighting; lamp casings; lamp glasses, lamp hanging supports, lamp reflectors, lamp shades; luminous tubes for lighting; sockets for electric lights; torches; search lights; lights and lamps for cosmetic purposes; apparatus and lamps for tanning purposes; apparatus for heating, steam generating, cooking, refrigerating, drying and ventilating; radiation apparatus for cosmetic and technical purposes; heating, ventilating and/or cooling systems, apparatus and installations; room heaters, vaporizers, air cleaners and humidifiers; installations and apparatus, all for airconditioning, humidifying and de-humidifying; filters being parts of or for use with the aforesaid air-conditioning installations or apparatus; fire hydrants; fire vents being parts of the aforesaid air-conditioning installations or apparatus; ceiling, table, pedastel and wall fans; apparatus and installations for water supply, bathing and sanitary purposes; ceiling, table, pedestal and wall fans; component parts for all the aforesaid goods.

The contested goods and services are the following:

Class 11: Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes; Solar thermal collectors [heating];Solar thermal collectors [heating]; Solar storage equipment; Heating installations and Solar energy powered heating installations; Heat pumps; Heat exchangers, not parts of machines; Lighting installations, lighting apparatus and lighting fixtures; Lamps; Light objects; Garden lighting; light poles; Parts for the aforesaid goods included in this class.

Class 35: Business mediation in the purchase and sale, import and export, and wholesaling and retailing of solar cells, solar wafers, chargers for rechargeable apparatus, batteries and battery chargers, including for electric vehicles, charging stations and electric charging points, including for electric vehicles, power banks, light boxes, luminous sign panels, luminous billboards (advertising boards), electric cables, conduits and wires and parts for the aforesaid goods; Business mediation in the purchase and sale, import and export, and wholesaling and retailing of apparatus for lighting; Business mediation in the purchase and sale, Export-import, And wholesaling and retailing in relation to lighting installations, Lighting equipment and Light fittings, Lamps, Lighting objects, Garden lighting, Light poles and Parts of the aforementioned goods.

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 11

The contested apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes; parts for the aforesaid goods included in this class are also covered in the specification of the earlier EUTM No 5 636 071. The goods are identical.

The contested solar thermal collectors [heating]; solar thermal collectors [heating]; solar storage equipment; heating installations and solar energy powered heating installations; heat pumps; heat exchangers, not parts of machines; parts for the aforesaid goods included in this class. are included in the opponent’s broad category of apparatus for heating; component parts for the aforesaid goods. The goods are identical.

The contested lighting installations, lighting apparatus and lighting fixtures; lamps; light objects; garden lighting; light poles; parts for the aforesaid goods included in this class are either identically covered by the opponent’s trade marks’ specifications (for instance apparatus and installations for lighting, component parts for the aforesaid goods) or are included in a broader category covered by the specifications (for instance garden lighting is included in the opponent’s apparatus and installations for lighting, component parts for the aforesaid goods). The goods are identical.

Contested services in Class 35

The contested services in Class 35 are business mediation services related to other services or goods determined by their object. These are agency, intermediation services aiming at connecting, advising and helping parties to enter into a transaction in the particular field. The provision of such services requires a significant knowledge regarding the market realities, and the characteristics of the goods in respect to which these services are provided. For instance the provision of the services business mediation in the purchase and sale, import and export, and wholesaling and retailing of apparatus for lighting requires knowledge of the lighting apparatus market, the legal requirements for import and export of such apparatus, the characteristics of various lighting apparatus, etc. To this extent, the Opposition Division finds a certain level of similarity (albeit rather low) between these services and the opponent’s lighting apparatus and installations in Class 11. The services are heavily defined by their object, namely the goods in relation to which the services are provided. The goods and services under comparison may, therefore, coincide in producer/provider. They coincide further in distribution channels and end users. And even though they might not be strictly complementary, they are often offered/provided together.

The same observations and reasoning apply also to the contested business mediation in the purchase and sale, export-import, and wholesaling and retailing in relation to lighting installations, lighting equipment and light fittings, lamps, lighting objects, garden lighting, light poles; light boxes, luminous sign panels, luminous billboards (advertising boards), solar cells, solar wafers and parts of the aforementioned goods. Bearing in mind that they relate to goods identical to those of the opponent a certain level of similarity (albeit rather low) exist.

On the other hand the contested business mediation in the purchase and sale, import and export, and wholesaling and retailing of chargers for rechargeable apparatus, batteries and battery chargers, including for electric vehicles, charging stations and electric charging points, including for electric vehicles, power banks, electric cables, conduits and wires and parts for the aforesaid goods do not show the connection established between the contested services examined in the previous two paragraphs and the opponent’s goods. They cannot also be considered parts and fittings for the opponent’s goods. Therefore, these services are dissimilar to any and all of the opponent’s goods in Classes 9, 10 and 11.

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 goods and services found to be identical or similar to a certain degree are directed at the public at large and at business customers with specific professional knowledge or expertise. Bearing in mind the specialised nature and complex technical characteristics of some of the goods such as apparatus for heating the degree of attention of the relevant public is considered high. The level of attention in relation to other goods such as parts for lighting poles is in no case higher than average. Therefore, the degree of attention may vary from average to high depending on the particular goods.

c) The signs

SYLVANIA	SOLVANA
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 signs have no particular meaning in German. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the German speaking part of the public such as the public in Germany and Austria.

Being composed of single indivisible elements the marks do not have any component which can be determined as more distinctive or dominant than others.

Visually, the signs are similar to the extent that they coincide in six out of eight/seven letters placed at the same position, namely: ‘S*LVAN*A’, where their first and last letters are the same. They only differ in their second letter ‘Y’ of the earlier versus ‘O’ of the contested sign and the letter ‘I’ of the earlier mark which has no counterpart in the contested sign. The signs are, therefore, visually similar to a high degree.

Aurally, the signs are similar to the extent that coincide in the sound of their coinciding letters. However, they differ in the sound of the letters ‘Y’ versus O’ and the ‘I’ of the earlier mark which has no counterpart in the contested mark. Moreover, the earlier mark will be pronounced in four syllables, whereas the contested sign will be pronounced in three syllables. The different number of syllables renders a different rhythm and intonation of the pronunciation of both marks. Therefore, the degree of aural similarity between the marks is average.

Conceptually, neither of the signs has a meaning for the average consumer 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.

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.

According to the opponent, the earlier trade mark has an enhanced distinctiveness/reputation as result of its long standing and intensive use in the European Union in connection with part of the goods and services for which it is registered, namely

European Union trade mark registration No 3 220 241:

Class 9: Starters for electric lamps; electronic starters for fluorescent lamps; ballasts for lamps and lighting fittings; parts and fittings for the aforesaid goods.

Class 10: Lights and lamps for curative, medical, surgical and therapeutical purposes; parts and fittings for the aforesaid goods.

Class 11: Apparatus and installations for lighting; fluorescent light tubes; light bulbs; lamps; filaments for lamps; arc lamps; electric discharge tubes for lighting; lamp casings; lamp glasses, lamp hanging supports.

European Union trade mark registration No 5 636 071:

Class 9: Starters for electric lamps, electronic starters for fluorescent lamps, ballasts for lamps and lighting fittings, parts and fittings for the aforesaid goods.

Class 11: Apparatus and installations for lighting; contact tracks for lighting; lighting tracks; luminaires; fluorescent light tubes; light bulbs; lamps; filaments for lamps; arc lamps; electric discharge tubes for lighting; lamp casings; lamp glasses, lamp hanging supports, lamp reflectors, lamp shades; luminous tubes for lighting; sockets for electric lights; search lights; lights and lamps for cosmetic purposes; lamps for tanning purposes; component parts for all the aforesaid goods.

This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18). Since it is relevant for the findings in relation to the claim under Article 8(5) EUTMR, the Opposition Division will draw a conclusion also in relation to the reputation of the earlier mark.

In its submissions dated 21/06/2019 (page 3) the opponent refers to evidence of reputation submitted on 26/05/2015 in opposition case No 2 432 402 and requests this evidence to be taken into account for the purposes of the current proceedings. In this regard the Opposition Division notes the following. According to the Guidelines for Examination in the Office, Part C, Opposition, Section 1 Procedural matters, 4.4 Requests and other documents related issues, 4.4.5 References made to documents or items of evidence in other proceedings (page 54) the Office may receive observations from the opponent or applicant in which they refer to documents or evidence submitted in other proceedings, for instance to evidence of use that has already been submitted in a different opposition. Such requests are accepted at any stage of the proceedings when the opponent/applicant clearly identifies the documents that it refers to. The party must indicate the following: (1) the number of the opposition it refers to; (2) the title of the document it refers to; (3) the number of pages of this document; and (4) the date this document was sent to the Office.

In the current case the opponent did not indicate the number of pages of the various documents.

Moreover, since the evidence to which the opponent refers is on a CD in accordance with Article 63(1)(b) EUTMDR the party concerned (the opponent) must submit by mail a second copy for transmission to the other party within the original time limit. If no copy is provided, these items of evidence will not be taken into account. The opponent did not submit a second copy of the evidence on CD. Therefore, based on the above two grounds the Opposition Division will not take into account the evidence submitted by the opponent on 26/05/2015 in opposition case No 2 432 402.

The evidence to be taken into account is the following:

Annex 1: Awards received by SYLVANIA from 2011 to 2018, among others the EMA Energy product 2015 awarded by the Energy Managers Association, Lighting design Awards in 2011 and 2014, Lux Awards 2011 and 2018, RedDot Award 2016 for lighting products and design, Electrical Industry awards finalist 2012, Lighting Industry Awards 2011, etc. The awards are for lighting goods branded with the earlier mark such as light bulbs, LED lights, decorative lights, LED candles, etc.

Annex 2: Catalogues dated 2017, 2018 and 2019 showing the wide-spread use of SYLVANIA products in the United Kingdom, Belgium, Hungary, Finland, the Netherlands, Sweden. SYLVANIA lightning goods and lighting design projects have been used in Museums, Art Galleries, Show rooms etc. such as the Paddington library, the Riverside museum in Glasgow, the University of Southampton, the Royal Academy of Music in London, Titanic Belfast, the Susan Weber Gallery, Decathlon, Leeds Art Gallery, Mazda Showroom in Croydon etc.

Annex 3: Samples of press releases dated 2016, 2017 regarding SYLVANIA branded lighting goods such as Sylvania Convenio, Sylvania HSXSyl-Line, Sylvania RefLED, SYLVANIA ToLEDo, SYLVANIA Relumina, etc. The articles provide information about the participation of SYLVANIA prducts at various fairs and exhibitions, award ceremonies and openings around the world, including Member States of the European Union as well as the significant presence of the SYLVANIA products in media.

Annex 4: Brochures and adverts dated 2014, 2015, showing the presence of SYLVANIA goods in retail stores such as IKEA, G-Raw Star, Ekoplaza supermarket, Marks & Spencer, Agnello, Ted Baker, Mazda, Renault and others.

Annex 5: An undated picture showing the sign at the roof of the Duna Tower building in Budapest.

Annex 6: Undated pictures of products and packaging of some of the SYLVANIA branded goods – LED lights, bulbs.

In relation to the reputation of the earlier mark the opponent refers also to the decision of the Opposition Division in case No B 2 316 548 dated 08/04/2016 recognizing that the trade mark SYLVANIA enjoys some degree of reputation for certain goods. The opponent refers also to the judgment of the General Court in Case T-430/15, EU:T:2016:590 recognizing the reputation of the trade mark SYLVANIA for certain goods in Classes 9, 10 and 11. It is also worth noting that in paragraph 49 of the cited judgment it is stated that the earlier marks do not have strong reputation.

Having examined the material listed above, the Opposition Division concludes that the earlier trade mark has acquired a high degree of distinctiveness through its use on the market in the European Union and reaches at least the minimum threshold of awareness among the relevant public necessary for acknowledging a certain level of reputation, however not strong. Even though the (level) of reputation of the mark is changing throughout time the Opposition Division cannot disregard the findings in the rather recent decision/judgment referred to by the opponent. The evidence submitted in the current case demonstrates that the brand maintained its position in the relevant market at least in relation to some of the goods covered by the earlier marks (see in this regard also the following paragraphs) in recent years due to its continues use, promotional campaigns, advertising efforts and solid media presence within a substantial period of time. Although the opponent did not provide any direct evidence that could prove beyond any doubt the reputation and recognition of the earlier mark such as market surveys or consumers’ polls, the awards received by SYLVANIA branded products and the wide-spread use of SYLVANIA products for landmark buildings throughout the relevant territory give an indirect indication for the trade mark’s reputation.

However, the evidence does not succeed in establishing that the two trade marks have a reputation for all the goods on which the opposition is based and for which reputation has been claimed. The vast majority of the evidence relates to lighting apparatus, bulbs, LED lights, lighting tubes. There is no evidence for the use or in any case for the enhanced level of distinctiveness and/or reputation of the earlier trade marks for the goods in Classes 9 and 10 and some of the goods in Class 11.

Therefore, the Opposition Division accepts that in the current case reputation of the earlier marks has been proven for the following goods:

European Union trade mark registration No 3 220 241:

Class 11: Apparatus and installations for lighting; fluorescent light tubes; light bulbs; lamps; electric discharge tubes for lighting; lamp glasses.

European Union trade mark registration No 5 636 071:

Class 11: Apparatus and installations for lighting; luminaires; fluorescent light tubes; light bulbs; lamps; electric discharge tubes for lighting; lamp glasses; luminous tubes for lighting.

e) Global assessment, other arguments and conclusion

The contested goods are identical to the opponent’s goods. Some of the contested services are similar to a low degree to the opponent’s goods and the others are dissimilar. The signs are visually similar to a high degree and aurally similar to an average degree. The conceptual aspect does not influence the assessment of the similarity of the signs. The level of attention varies from average to high. The earlier mark enjoys a high level of distinctiveness acquired through intensive use for certain goods as indicated in section d) above.

The differences between the signs are confined to their letters ‘Y’ versus ‘O’ and the letter ‘I’ of the earlier mark which has no counterpart in the contested mark. These differences are not enough to counterbalance the significant similarities between them as established in section c) above.

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). 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).

According to the settled Case-Law 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).

Bearing in mind the findings of the analysis of the current case and by applying the above principles the Opposition Division concludes that there exists a likelihood of confusion on part of the German-speaking part of the public. As stated in section c) of the decision likelihood of confusion on part of the public only is sufficient to reject the contested application. The finding applies to the identical goods and also to the contested services that have been found similar only to a low degree because the level of similarity between the signs is sufficient to counterbalance the low similarity between the contested services and the earlier goods.

Considering all the above, the opposition is partly well founded on the basis of the opponent’s earlier trade mark registrations.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical and for the services found similar to a low degree to the goods of the earlier trade marks.

The Opposition is not successful insofar as the dissimilar services are concerned. 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 services cannot be successful.

REPUTATION — ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds for refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

 The signs must be either identical or similar.

 The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

 Risk of injury: use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08 & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the [applicant][holder] establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

a) Reputation of the earlier trade marks

The evidence submitted by the opponent to prove the reputation and highly distinctive character of the earlier trade marks has already been examined above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

b) The signs

The signs have already been compared above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

c) The ‘link’ between the signs

As seen above, the earlier marks are reputed, however their reputation is not strong. The signs are similar. In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed by several judgments (23/10/2003, C‑408/01, Adidas, EU:C:2003:582, § 29, 31; 27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 66). It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 42):

 the degree of similarity between the signs;

 the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;

 the strength of the earlier mark’s reputation;

 the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;

 the existence of likelihood of confusion on the part of the public.

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.

The establishment of such a link, while triggered by similarity (or identity) between the signs, requires that the relevant sections of the public for each of the goods and services covered by the trade marks in dispute are the same or overlap to some extent.

According to the Court of Justice of the European Union,

It is therefore conceivable that the relevant section of the public as regards the goods or services for which the earlier mark was registered is completely distinct from the relevant section of the public as regards the goods or services for which the later mark was registered and that the earlier mark, although it has a reputation, is not known to the public targeted by the later mark. In such a case, the public targeted by each of the two marks may never be confronted with the other mark, so that it will not establish any link between those marks.

(27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 48.)

The Court of Justice has also noted,

… that certain marks may have acquired such a reputation that it goes beyond the relevant public as regards the goods or services for which those marks were registered. In such a case, it is possible that the relevant section of the public as regards the goods or services for which the later mark is registered will make a connection between the conflicting marks, even though that public is wholly distinct from the relevant section of the public as regards goods or services for which the earlier mark was registered.

(27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 51‑52.)

In the present case, an overlap between the relevant sections of the public for the trade marks in dispute can hardly be established. This is because the reputation of the earlier mark is not strong and does not go beyond the relevant public as regards the goods for which the earlier marks were registered. It has been established also that the earlier goods are dissimilar to the applicant’s services. This is on one hand because services are by nature different than goods – the former are intangible, while the latter are tangible. On the other hand the services of the applicant are provided in relation to goods that are not identical to those of the opponent.

Furthermore, the goods chargers for rechargeable apparatus, batteries and battery chargers, including for electric vehicles, charging stations and electric charging points, including for electric vehicles, power banks; electric cables, conduits and wires and parts for the aforesaid goods are very distinct categories of goods which are different from lighting apparatus. The fact that all these goods are somehow related to electricity is not enough to justify a proximity between the economic sectors bearing in mind moreover that subject to the comparison are not the above goods themselves but particular services provided in relation to these goods, namely business mediation in the purchase and sale, import and export, and wholesaling and retailing of.

Bearing in mind also the established level of reputation of the earlier mark (not strong), the lack of likelihood of confusion between the signs for the goods and services in conflict, the lack of conceptual similarity between the signs and the rather improbable overlap of the relevant public the Opposition Division finds that the later mark is unlikely to bring the earlier mark to the mind of the relevant public.

Based on the above conclusion the opposition can be rejected at this stage of the examination of the case under Article 8(5) EUTMR.

Nevertheless, in order to avoid the impression that the interests of the opponent have been prejudiced by not analysing the risk of injury claimed by the opponent, the Opposition Division will continue the examination assuming that it is likely that the public establishes a link between the marks.

d) Risk of injury

Use of the contested mark will fall under Article 8(5) EUTMR when any of the following situations arise:

 it takes unfair advantage of the distinctive character or the repute of the earlier mark;

 it is detrimental to the repute of the earlier mark;

 it is detrimental to the distinctive character of the earlier mark.

Although detriment or unfair advantage may be only potential in opposition proceedings, a mere possibility is not sufficient for Article 8(5) EUTMR to be applicable. While the proprietor of the earlier mark is not required to demonstrate actual and present harm to its mark, it must ‘adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment’ (06/07/2012, T‑60/10, Royal Shakespeare, EU:T:2012:348, § 53).

It follows that the opponent must establish that detriment or unfair advantage is probable, in the sense that it is foreseeable in the ordinary course of events. For that purpose, the opponent should file evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, that could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

Unfair advantage (free-riding)

Unfair advantage in the context of Article 8(5) EUTMR covers cases where there is clear exploitation and ‘free‑riding on the coat‑tails’ of a famous mark or an attempt to trade upon its reputation. In other words, there is a risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods and services covered by the contested trade mark, with the result that the marketing of those goods and services is made easier by their association with the earlier mark with a reputation (06/07/2012, T‑60/10, Royal Shakespeare, EU:T:2012:348, § 48; 22/03/2007, T‑215/03, Vips, EU:T:2007:93, § 40).

The opponent claims that the image of prestige and high quality of the mark SYLVANIA will be transferred to the contested goods and services SOLVANA ‘considering the identity and similarity between the goods and services at issue, the strong reputation of the earlier mark and the similarity between the signs.’ It has been established, however, that there is no similarity between the earlier goods and the services of the applicant subject to the examination under Article 8(5) EUTMR. It has also been established that contrary to the opponent’s statement the reputation of the earlier marks is not strong and does not go beyond the relevant public as regards the goods for which reputation has been accepted, namely lighting apparatus in general. That is, the line of arguments developed by the opponent further in its submissions is based on two (out of three) wrong premises. Therefore, the claims that the use of the contested EUTM will thus lead to free-riding as the substantial investments, publicity and promotional efforts of the opponent will benefit the applicant - the public will associate the contested EUTM with the famous brand SYLVANIA and that this will result in the contested EUTM capturing the attention of the consumers, who will be consequently attracted to it and will be inclined to buy the goods and services it distinguishes, are not convincing.

In the absence of prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment and bearing in mind what has been stated in relation to the line of arguments developed by the opponent, the Opposition Division concludes that there are no indications suggesting that the use of the contested trade mark in relation to the services business mediation in the purchase and sale, import and export, and wholesaling and retailing of chargers for rechargeable apparatus, batteries and battery chargers, including for electric vehicles, charging stations and electric charging points, including for electric vehicles, power banks; electric cables, conduits and wires and parts for the aforesaid goods would take unfair advantage of the distinctive character or the repute of the earlier trade mark.

As seen above, it has not been established that use of the contested trade mark would take unfair advantage of the distinctive character or repute of the earlier trade marks, as required by Article 8(5) EUTMR. As one of the necessary requirements is not met, the opposition must be rejected as not well founded under Article 8(5) EUTMR as far as it concerns the dissimilar services as identified following the comparison of goods and services above (LIKELIHOOD OF CONFUSION, section a) of this decision.

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 and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

María Belén IBARRA DE DIEGO

Plamen IVANOV

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.