OPPOSITION No B 3 071 513

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

Rio Industrial Limited, 1B, Hung Cheong Fty Bldg, 742-748 Cheung Sha Wan Road, Cheung Sha Wan, KL, Hong Kong, KL, Hong Kong, Hong Kong Special Administrative Region of the People's Republic of China (applicant), represented by Carolina María Sánchez Margareto, C/ Sueca, 22, 4º, pta 12, 46006, Valencia, Spain (professional representative).

On 21/12/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 071 513 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 17 945 007 for the figurative mark namely against some of the goods in Class 11. The opposition is based on, inter alia, European Union trade mark registration No 10 860 451 for the word mark BIOLUX. 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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 10 860 451.

a) The goods

The goods on which the opposition is based are, among others, the following:

Class 11: Lighting apparatus and installations, in particular electric lamps and lights; Lighting apparatus based on light-emitting diodes (LEDs), Including organic light emitting diode, LED lamps and Light emitting diode lights and parts thereof, Lighting installations and parts therefor, Including based on light emitting diodes; The aforesaid goods also being brought together to form a lighting system.

The contested goods are the following:

Class 11: Architectural lighting fixtures; battery powered incandescent emergency lighting units; ceiling lights; discharge tubes, electric, for lighting; display lighting; electric lighting fixtures; emergency lighting apparatus; fiber optic lighting fixtures; hid [high-intensity discharge] architectural lighting fixtures; light bulbs; light diffusers; light-emitting diodes [led] lighting apparatus; lighting and lighting reflectors; lighting apparatus and installations; lighting being for use with security systems; lighting fittings; lighting fixtures for commercial use; lighting fixtures for household use; lights for vehicles; luminous tubes for lighting; outdoor lighting; plasma lighting system [pls] lighting; residential lighting fixtures; searchlights; solar cell lighting apparatus.

Some of the contested goods are identical or similar to goods on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods listed above. The examination of the opposition will proceed as if all the contested goods were identical to those of the earlier mark which, for the opponent, is the best light in which the opposition can be examined.

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 assumed to be identical are directed at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.

c) The signs

BIOLUX
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).

As regards the earlier mark, although it is composed of one verbal element, the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T 256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T 146/06, Aturion, EU:T:2008:33, § 58).

The element ‘RIO’ will be understood by a significant part of the relevant public as the second largest city in Brazil, Rio de Janeiro. Furthermore, the relevant Spanish-, Portuguese-speaking public will associate this element with the meaning ‘river’. This element is normally distinctive for the relevant goods.

The element ‘LUX’ included in both signs could be associated, by a part of the public, with the basic English word ‘luxury’, which is commonly used in trade (which it is). It is also a basic physical unit for measuring illumination, that is, luminous flux per unit of area. Bearing in mind that the relevant goods are lighting apparatus and installations, this element is non-distinctive in relation to the goods in question.

The prefex ‘BIO’ present in the earlier mark is usually used in commerce to refer to organic and/or natural and environmentally friendly products. This has been confirmed by the General Court, which held that the term ‘bio’ is used on the market to indicate that the goods in question contribute to environmental sustainability, that they use natural products or that they have been produced organically (10/09/2015, T 610/14, BIO organic, EU:T:2015:613, § 17; 21/02/2013, T 427/11, Bioderma, EU:T:2013:92, § 45 46). This element is considered to be weak in relation to the relevant goods as it will be perceived as a reference to the fact that, for example, they are made of organic materials or substances.

The element ‘RIO’ in the contested sign is the dominant element as it is the most eye-catching due to its size and position.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. Therefore, the change introduced by the first letter ‘B’ in the earlier mark and ‘R’ in the contested sign will not be overlooked by the consumer.

Visually and aurally, the signs coincide in ‘LUX’ which is non-distinctive. However, the earlier mark begins with the sequence of letters ‘BIO’ whereas in the contested sign this word is preceded by the element ‘RIO’ which is dominant. Furthermore, visually, the marks differ in the typeface of the contested sign.

Therefore, the signs are visually and aurally similar to a low degree.

Conceptually, although the coinciding element ‘LUX’ will evoke a concept, it is not sufficient to establish any conceptual similarity, as this element is non-distinctive and cannot indicate the commercial origin. The attention of the relevant public will be attracted by the additional, distinctive, verbal elements, which have a meaning. Therefore, the signs are conceptually dissimilar.

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. The distinctiveness of the earlier mark must be seen as lower than average, since, as stated above in section c) of this decision it is a combination of two elements considered one non-distinctive and the other weak in relation to the goods at stake.

e) Global assessment, other arguments and conclusion

Within the scope of the global consideration of all factors relevant to the circumstances of the case in assessing the likelihood of confusion, the interdependence between the relevant factors, in particular the similarity between the trade marks and between the goods at issue, must be taken into consideration. Accordingly, a lesser degree of similarity between these goods or services may be offset by a greater degree of similarity between the marks, and vice versa.

In the present case, the conflicting goods are assumed to be identical. The degree of attention of the relevant public may vary from average to high.

The distinctiveness of the earlier mark is lower than average.

The signs are visually and aurally similar to a low degree, and conceptually dissimilar. As noted above, the coinciding element ‘LUX’ is descriptive for the goods in question. According to the Common Practice, when marks share an element with no distinctiveness, the assessment will focus on the impact of the non-coinciding components on the overall impression of the marks. The assessment will take into account the similarities/differences and distinctiveness of the non-coinciding components. A coincidence only in non-distinctive components does not lead to likelihood of confusion. In the present case ‘BIO’ and ‘RIO’ are the most distinctive elements of the signs.

The difference between the initial parts of the signs are clearly noticeable by the relevant public especially taking into account that they have a clear and specific meaning and these meanings are different.

In the light of the above, and notwithstanding the principles of interdependence and imperfect recollection, the differences between the signs are sufficient, in spite of the identity of the goods, to not confuse the average consumer.

There is no reason to assume that the relevant public with an average or high degree of attention will be misled into thinking that the identical goods bearing the conflicting signs come from the same undertaking or from undertakings that are economically linked.

Considering all the above, even assuming that the goods are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

The opponent has also based its opposition on the following earlier trade marks:

German trade mark registration No 302018107658 for the word mark BIOLUX and International trade mark registration No 1 443 548 designating the European Union.

Since these marks are identical to the one that has been compared and cover the same or a narrower scope of goods, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods.

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, 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

Aldo BLASI

Francesca CANGERI

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.