OPPOSITION No B 3 094 845

Adam Hall GmbH, Adam-Hall-Str. 1, 61267 Neu-Anspach, Germany (opponent), represented by Hoefer & Partner Patentanwälte mbB, Pilgersheimer Str. 20, 81543 München, Germany (professional representative)

a g a i n s t

Dongguan Jiede Lighting Co., Ltd, 3rd Floor, Building 3, No. 1, Long Tan Road, Daping Village, Tangxia Town, Dongguan, Guang Dong Province, People’s Republic of China (applicant), represented by Sakellarides Law Offices, Adrianou Str. 70, 10556 Athens, Greece (professional representative).

On 28/08/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 094 845 is upheld for all the contested goods.

2. European Union trade mark application No 18 053 112 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 of European Union trade mark application No 18 053 112 for the figurative mark . The opposition is based on European Union trade mark registration No 14 782 511 for the word mark ‘ZENIT’. 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 11: Stage lighting apparatus; filters for stage lighting; studio lamps; film stage lighting apparatus; mirror balls being lighting fittings.

The contested goods are the following:

Class 11: Table lamps; floor lamps; chandeliers; hanging ceiling lamps; street lamps; lighting fixtures; lamps; safety lamps; wall lamps; light bulbs.

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 contested lamps; lighting fixtures are included in, or overlap with, the opponent’s studio lamps, respectively. Since the Opposition Division cannot ex officio dissect these goods from each other, they are considered identical.

The contested light bulbs are considered similar to the opponent’s studio lamps to the extent that these goods may be in a complementary relationship, that is to say, one is indispensable for the functioning of the other. Moreover, they will be sold at the same places and demanded by the same consumers. Finally, they may have the same origin.

The contested table lamps; floor lamps; chandeliers; hanging ceiling lamps; wall lamps are considered similar to the opponent’s studio lamps and film stage lighting apparatus to the extent that they have the same nature of lighting apparatus and global purpose of shedding light on objects or/and supplying artificial light in a particular environment. As result, they may be found in the same outlets for lighting apparatus and may target the same public. Moreover, these goods will usually have the same origin of specialised companies, that is to say, undertakings adapting their know-how and expertise of lighting bodies to offer on the market lighting solutions for various commercial fields, including household or stage lighting.

Likewise, the contested safety lamps; street lamps are at least similar to a low degree to the opponent’s film stage lighting apparatus to the extent that they may have the same nature of lighting articles and similar purpose and distribution channels, while also not excluded the same producers from the lighting industry, as touched upon above.

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 found to be identical or similar to varying degrees are directed at the public at large, as well as at business customers with specific professional knowledge or expertise in the lighting industry, including stage lighting.

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

By way of example, less attention may be paid to light bulbs that are goods purchased on a frequent basis and of rather cheap character. By contrast, it cannot be excluded that some of the lighting bodies may be paid more attention to due to their sophistication and special use.

c) The signs and distinctiveness of the earlier mark

ZENIT
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 earlier mark consists of a single word, ‘ZENIT’, that will be broadly understood by the EU public, for instance, by the English and French speakers associating it with ‘zenith’/‘zenith‘ or by the Swedish, German, Polish, Danish, Romanian, Bulgarian, Croatian, Slovak, Slovenian, Dutch and Italian consumers recognising the existing equivalent ‘Zenit’/’zenit’, as referring to ‘the point on the celestial sphere vertically above an observer’. Since this word has no relation to the goods in question, it is considered of a normal degree of distinctiveness. Moreover, given that the opponent did not make any further claim as regards the distinctiveness of the mark as a whole more than simply stating that the mark enjoys ‘at least average degree’ and yet providing no evidence thereof, the earlier mark is deemed to be of a normal distinctiveness.

The contested sign is not an existing word per se but will be most probably associated with the word ‘zenith’, as explained above, and to that extent the same findings apply in relation to its distinctiveness to the goods.

Despite being a figurative mark, the contested sign does not possess any graphical particularities that would deviate the consumer’s attention from its verbal element that is depicted in a standard font.

The Opposition Division considers it appropriate to continue the examination of the signs from the above perspective, namely that both signs bring to mind the concept of ‘zenith’ for a substantial part of the European Union consumers, as this case scenario will clearly have an impact on the perception of the signs making the public more prone to confusion.

Visually and aurally, the signs coincide in the letters ‘ZENI*T’, as well as in the sounds thereof. However, they differ in the additional reversed penultimate letter ‘I’ in the contested sign having no counterpart in the earlier mark. Account is nevertheless taken of the fact that the relevant consumers will barely perceive this additional letter as creating another sound or, due to its rather simple feature of one line and a dot, as being very striking visually.

Consequently, considering the above, the signs are visually highly similar and aurally, if not identical, at least nearly identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived as ‘zenith’, the signs are conceptually identical.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

d) Global assessment, other arguments and conclusion

The goods are found partly identical and partly similar to varying degrees. The degree of attention applied by the non-specialised public and the specialists will vary from below average to above the average, for the reasons explained above. The earlier mark enjoys a normal degree of distinctiveness, as follows from section c) of this decision.

The conflicting signs were established as visually highly similar, aurally nearly identical, if not identical, and conceptually identical. Due to the difference in only one additional letter in the contested sign, there is a likelihood of confusion because the visual and aural coincidences are overwhelming. Moreover, the signs will convey the same meaning for a large portion of the EU consumers who, relying on that same concept, may pay less attention to the visual differences presented by the signs. Also, 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). Еven 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). Consequently, the addition of a one single letter, albeit depicted reversed, occupying a non-prominent position in the contested sign, and repeated as a vowel sound, does not produce such a difference that would significantly set apart the overall impression of the signs.

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). Consequently, the greater similarities between the signs are considered sufficient to outweigh the lower degree of similarity between some of the conflicting goods.

Considering all the above and taking into account the principle of interdependence, there is a likelihood of confusion on a substantial part of the EU public.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 14 782 511. It follows that the contested trade mark must be rejected for all the contested 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 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

Meglena BENOVA

Manuela RUSEVA

Mads Bjørn Georg JENSEN

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.