OPPOSITION No B 3 087 781

Consorzio Ecolight, Via Monte Rosa, 96, 20149 Milano, Italy (opponent), represented by Pipparelli & Partners, Via Quadronno, 6, 20122 Milano, Italy (professional representative)

a g a i n s t

ECO-LIGHT Leuchten GmbH, Bücheler Weg 27, 53347 Alfter, Germany (applicant), represented by Wagner Albiger & Partner Patentanwälte mbB, Siegfried-Leopold-Str. 27, 53225 Bonn, Germany (professional representative).

On 22/06/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 087 781 is upheld for all the contested goods and services.

2. European Union trade mark application No 18 026 912 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 18 026 912 for the figurative mark . The opposition is based on Italian trade mark registration No 1 365 616 and European Union trade mark registration No 16 583 321, both for the figurative mark . 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 two earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s Italian trade mark registration No 1 365 616, as it is the earlier right with the broadest scope of protection.

a) The goods and services

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

Class 11: Lighting apparatus; lamps, light bulbs and tubes for lighting; parts and fittings for lighting.

Class 35: Business management; business administration; office functions; marketing studies; providing statistical information; advertising; dissemination of advertising matter; organization of exhibitions for commercial or advertising purposes.

The contested goods and services are the following:

Class 9: Accessories for lights, lamps and lighting systems, namely connection cables, transformers, dimmers, lighting regulators, overvoltage modules, adapters; parts of lights, lamps and lighting systems, namely cross connectors, plug-in connectors, couplings.

Class 11: Lighting apparatus; luminaires; lighting lamps; lighting systems; parts and accessories for all the aforesaid goods, included in this class.

Class 35: Retail and wholesale services in relation to lighting.

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.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘namely’, used in the applicant’s list of goods in Class 9 to show the relationship of individual goods to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed.

Contested goods in Class 9

The contested accessories for lights, lamps and lighting systems, namely connection cables, transformers, dimmers, lighting regulators, overvoltage modules, adapters; parts of lights, lamps and lighting systems, namely cross connectors, plug-in connectors, couplings are all accessories and parts of various lighting apparatus, and they are similar at least to a low degree to the opponent’s lighting apparatus; lamps; parts and fittings for lighting protected in Class 11, as they can have the same producers, end users and distribution channels. Furthermore, they are complementary to each other.

Contested goods in Class 11

The contested lighting apparatus; luminaires; lighting lamps; lighting systems; parts and accessories for all the aforesaid goods, included in this class are identical to the opponent’s lighting apparatus; lamps, light bulbs and tubes for lighting; parts and fittings for lighting, either because they are identically contained in both lists (including synonyms) or because the opponent’s goods include, are included in, or overlap with, the contested goods.

Contested services in Class 35

Retail services concerning the sale of specific goods are similar to an average degree to these specific goods. Although the nature, purpose and method of use of these goods and services are not the same, they are similar because they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public. The same principles apply to services rendered in connection with other types of services that consist exclusively of activities revolving around the actual sale of goods, such as wholesale services, internet shopping, catalogue or mail order services in Class 35.

Therefore, the contested retail and wholesale services in relation to lighting are similar to the opponent’s lighting apparatus protected in Class 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 varying degrees) 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 price, specialised nature, or terms and conditions of the goods and services purchased.

c) The signs and the distinctiveness of the earlier mark

Earlier trade mark	Contested sign

The relevant territory is Italy.

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 element ‘ECOLIGHT’, which the signs have in common, as a whole, is meaningless for the public in the relevant territory. Therefore, it is distinctive. However, the Court has held that, although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words they know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57). This is particularly relevant as regards the signs in conflict, since the element ‘ECOLIGHT’ is depicted in blue letters in the earlier mark and in black letters in the contested sign, except for the letter ‘O’, which is depicted in yellow in the earlier mark and in green in the contested sign. These figurative aspects highlight that the signs are composed of a combination of elements, namely ‘ECO’ and ‘LIGHT’. Furthermore, in the contested sign, these word components are separated with a hyphen.

The element ‘ECO’ could be associated with various meanings, such as ‘environmentally friendly’ or ‘cost effective in terms of energy’. Insofar as the goods and services in question are all related to lighting apparatus and their parts and accessories, and these goods consume energy, the element ‘ECO’ provides information as to their energy efficiency or their ecological character. Consumers are increasingly mindful of the ecological quality of goods, including their energy consumption, and of environmentally friendly manufacturing processes. Consequently, the element ‘ECO’ is weak for these goods and services.

The element ‘LIGHT’ is an English word, which will be understood at least by a part of the relevant public and is, therefore, weak in relation to the goods and services in question, which relate to lighting apparatus and their parts and accessories. For the remaining part of the relevant public, this element has no meaning and is, therefore, distinctive.

The figurative element depicted immediately below the letter ‘O’ in the contested sign will not be associated with any concept. In this regard, it must be recalled that when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37).

Visually, the signs coincide in the element ‘ECOLIGHT’ depicted in upper‑case letters and differ in their figurative aspects, namely the hyphen and the figurative element below the letter ‘O’ in the contested sign. Although the signs also differ in their colours, they coincide in the arrangement of the combination of them, as in both cases the letter ‘O’ is depicted in a light colour in contrast with the rest of the letters.

Therefore, the signs are visually highly similar.

Aurally, the pronunciation of the signs coincides in the syllables ‘E‑CO‑LIGHT’, present identically in both signs.

Therefore, the signs are aurally identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with the same meaning, they are conceptually identical.

As the signs have been found similar in all the aspects of the comparison, the examination of likelihood of confusion will proceed.

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion, as it determines the degree of protection of the earlier trade mark. Trade marks with a weak distinctive character have a limited scope of protection.

However, in the present case, the exact degree of distinctiveness of the earlier mark is not a decisive factor taking into account that the conflicting signs are made up of the same word elements and that the figurative elements neither convey any meaning nor play a significant role within the signs. Therefore, the applicant’s claim in relation to the weak distinctive character of the earlier trade mark is not persuasive of lack of confusion.

d) Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified. It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

In the present case, the goods and services are partly identical and partly similar (to varying degrees). They target the public at large and business customers with a degree of attention that varies from average to high.

The signs are visually highly similar, only differing in their figurative elements, which, however, show certain coincidences, as explained above in section c) of the present decision. Furthermore, the signs are aurally and conceptually identical.

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings. Indeed, in the present case, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

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). In the present case, the assessed degree of similarities between the signs is clearly sufficient to offset the low degree of similarity between some of the goods.

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

Therefore, the opposition is well founded on the basis of the opponent’s Italian trade mark registration No 1 365 616. It follows that the contested trade mark must be rejected for all the contested goods and services.

As the earlier Italian trade mark registration 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 right invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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

Vít MAHELKA

Marta GARCÍA COLLADO

Chantal VAN RIEL

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.