OPPOSITION No B 3 066 782

MakeSkyBlue (Shenzhen) Technology Co. Ltd., M1402, Complex Building C6, Hezhou Hengfeng Industrial City, Xixiang Sub-dist, Baoan District, 518000 Shenzhen, People’s Republic of China (opponent), represented by Isabelle Bertaux, 55 rue Ramey, 75018 Paris, France (professional representative)

a g a i n s t

Jin Gong, B2301, Bldg. 2, Zhongsen Shuangzizuo Mansion, Ruyi Rd., Longcheng St., Longgang District, Shenzhen, Guangdong, People’s Republic of China (applicant), represented by Rolim, Mietzel, Wohlnick & Calheiros LLP, Graf-Adolf-Straße 14, 40212 Düsseldorf, Germany (professional representative).

On 27/08/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 066 782 is partially upheld, namely for the following contested goods:

Class 9: Wires, electric; cables, electric; materials for electricity mains [wires, cables]; connectors [electricity]; plugs, sockets and other contacts [electric connections]; connections for electric lines; inverters [electricity]; wire connectors [electricity]; converters for electric plugs; battery chargers; accumulators, electric; photovoltaic cells; solar batteries; solar panels for electricity generation.

2. European Union trade mark application No 17 931 914 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 all the goods of European Union trade mark application No 17 931 914 for the word mark ‘MakeSkyBlue’. The opposition is based on European Union trade mark registration No 17 969 599 for the word mark ‘MakeSkyBlue’. 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 9: Accumulator jars; accumulators, electric, for vehicles; batteries, electric, for vehicles; battery charge devices; battery chargers; calculating machines; electric transformers; electric voltage transformers; electrical transformers; integrated circuits; inverters; photovoltaic cells; transmitters of electronic signals; electric cables, wires, conductors and connection fittings therefor; electric wires and cables; power inverters.

The contested goods are the following:

Class 9: Wires, electric; cables, electric; materials for electricity mains [wires, cables]; connectors [electricity]; plugs, sockets and other contacts [electric connections]; connections for electric lines; inverters [electricity]; wire connectors [electricity]; converters for electric plugs; battery chargers; accumulators, electric; photovoltaic cells; solar batteries; solar panels for electricity generation.

Class 11: Bicycle lights; pocket searchlights; luminous tubes for lighting; miners’ lamps; luminous house numbers; flashlights [torches]; search lights; street lamps; light-emitting diodes [LED] lighting apparatus; solar furnaces; electric water heaters; solar water heaters.

The degree of similarity between the goods and services is a matter of law, which must be assessed ex officio by the Office even if the parties do not comment on it. However, the Office’s ex officio examination is restricted to well-known facts, that is to say, ‘facts which are likely to be known by anyone or which may be learned from generally accessible sources’, which excludes facts of a highly technical nature (03/07/2013, T‑106/12, Alpharen, EU:T:2013:340, § 51). Consequently, what does not follow from the evidence/arguments submitted by the parties or is not commonly known should not be speculated on or extensively investigated ex officio (09/02/2011, T‑222/09, Alpharen, EU:T:2011:36, § 31-32). This follows from Article 95(1) EUTMR, according to which, in opposition proceedings, the Office is restricted in its examination to the facts, evidence and arguments provided by the parties and the relief sought.

Therefore, the Opposition Division will proceed with the analysis of the similarity of the goods taking into account the well-known facts, the parties’ arguments (if submitted) and the Office’s practice as reflected in the Guidelines for Examination in the Office.

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 Canon criteria).

Contested goods in Class 9

Wires, electric; cables, electric; inverters [electricity]; battery chargers; photovoltaic cells are identically contained in both lists of goods (including synonyms).

The contested accumulators, electric includes, as a broader category the opponent’s accumulators, electric, for vehicles. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical.

The contested materials for electricity mains [wires, cables]; connections for electric lines; wire connectors [electricity]; connectors [electricity]; plugs, sockets and other contacts [electric connections]; converters for electric plugs are included in the broad category of, or overlap with, the opponent’s electric cables, wires, conductors and connection fittings therefor. Therefore, they are identical.

The contested solar panels for electricity generation; solar batteries are closely linked to the opponent’s photovoltaic cells and battery chargers, respectively, since they can be produced by the same undertakings, distributed through the same distribution channels and target the same relevant public. Moreover, they can be complementary. Therefore, they are similar to a high degree.

Contested goods in Class 11

The remaining contested goods, namely bicycle lights; pocket searchlights; luminous tubes for lighting; miners’ lamps; luminous house numbers; flashlights [torches]; search lights; street lamps; light-emitting diodes [LED] lighting apparatus, encompass a variety of apparatus for lighting and solar furnaces; electric water heaters; solar water heaters, refer to heating apparatus. The opponent’s goods in Class 9 mainly fall within the category of ‘apparatus, instruments and cables for electricity’ (e.g. battery chargers, photovoltaic cells and electric cables, wires, conductors and connection fittings therefor) but some ‘information technology devices’ (i.e. transmitters of electronic signals and calculating machines) are also protected. The goods compared do not have anything relevant in common that could justify a finding a level of similarity between them under the Canon criteria.

The Opposition Division does not share the opponent’s opinion that the contested goods in Class 11, such as lighting or heating apparatus, are similar to batteries devices or cables due to their ‘complementarity’. Complementarity has to be clearly distinguished from use in combination, where goods/services are merely used together, whether by choice or convenience. This means that they are not essential for each other (16/12/2013, R 634/2013‑4, ST LAB (FIG. MARK) / ST et al., § 20). Moreover, the fact that some of the contested goods in Class 11 may incorporate goods in Class 9, such as batteries, photovoltaic cells or electric components, is not sufficient in itself to render them similar. In most cases, the mere fact that one product is used for the manufacture of another will not be sufficient to show that the goods are similar, as their natures, purposes, and distribution channels may be quite distinct (13/04/2011, T‑98/09, T Tumesa Tubos del Mediterráneo S.A., EU:T:2011:167, § 49-51). The goods compared clearly have different natures, ultimate purposes and methods of use. Despite the fact that some of the goods can be used in combination, they are neither complementary nor in competition. Furthermore, they do not originate from the same companies and normally have different distribution channels.

Therefore, all the contested goods in Class 11 are considered dissimilar.

2. The signs

MakeSkyBlue	MakeSkyBlue
Earlier trade mark	Contested sign

The signs are identical.

3. Global assessment, other arguments and conclusion

Some of the contested goods were found to be identical and some similar to a high degree. Given this, and the identity of the signs, there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR and the opposition must be upheld for these goods.

Considering all the above, there is a likelihood of confusion on the part of the public.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar (to a high degree) to the goods of the earlier trade mark.

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

Riccardo RAPONI

Birgit FILTENBORG

Andrea VALISA

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.