OPPOSITION No B 3 088 808

Ohmio Servicios Integrales, S.L., Calle Olivo nº 8 1º Parla, 28981 Madrid, Spain (opponent), represented by Leggroup, Calle O’Donnell 32 3º. D, 28009 Madrid, Spain (professional representative)

a g a i n s t

Atas Vedat, Strada Eroilor, Nr. 1H, Scara 2, Ilfov, 719321 Otopeni, Romania (applicant).

On 07/09/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 088 808 is upheld for all the contested goods.

2. European Union trade mark application No 18 063 306 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 18 063 306 for the figurative mark . The opposition is based on, inter alia, European Union trade mark registration No 16 455 446 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 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 16 455 446.

a) The goods

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

Class 11: Electric lamps; luminaires; led luminaires; light-emitting diodes [led] lighting apparatus; light-emitting diodes [led] lighting apparatus; light emitting diode (led) lighting apparatus; led light machines; led light bulbs; light diffusers; lamp shades; standard lamps; led flashlights; led lighting installations.

The contested goods are the following:

Class 11: Luminaires; roof lights [lamps]; lamps for festive decoration; industrial lighting fixtures; architectural lighting fixtures; incandescent lamps; fluorescent luminaires for architectural lighting; fluorescent luminaires for stage lighting; outdoor lighting; pendant fluorescent lighting fixtures; luminaires for security use; indoor electrical lighting fixtures; lighting fittings; halogen luminaires; lighting transformers; sconces [electric light fixtures]; led lighting fixtures; lighting fixtures for household use; arc lamps [lighting fixtures]; halogen stage lighting fixtures; halogen architectural lighting fixtures; indoor fluorescent lighting fixtures; emergency lighting installations; suspension rails [not electrified] for electrical lighting fixtures; hid [high-intensity discharge] architectural lighting fixtures; hid [high-intensity discharge] stage lighting fixtures; glass covers being fittings for lamps for sun lamps.

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.

Luminaires are identically contained in both lists of goods.

Luminaires are defined as ‘light fixtures’ (information extracted from Collins Dictionary on 31/08/2020 at https://www.collinsdictionary.com/dictionary/english/luminaire). The terms luminaires and lighting fixtures refer to the same goods and are interchangeable. Therefore, the contested roof lights [lamps]; lamps for festive decoration; industrial lighting fixtures; architectural lighting fixtures; incandescent lamps; fluorescent luminaires for architectural lighting; fluorescent luminaires for stage lighting; outdoor lighting; pendant fluorescent lighting fixtures; luminaires for security use; indoor electrical lighting fixtures; halogen luminaires; sconces [electric light fixtures]; led lighting fixtures; lighting fixtures for household use; arc lamps [lighting fixtures]; halogen stage lighting fixtures; halogen architectural lighting fixtures; indoor fluorescent lighting fixtures; emergency lighting installations; hid [high-intensity discharge] architectural lighting fixtures; hid [high-intensity discharge] stage lighting fixtures are included in the broad category of the opponent’s luminaires. These goods are identical.

The contested lighting fittings; lighting transformers; suspension rails [not electrified] for electrical lighting fixtures; glass covers being fittings for lamps for sun lamps are essentially fittings and accessories for lamps and/or luminaires. Therefore, they are at least similar to the opponent’s luminaires. These goods are typically produced by the same manufacturers, are directed towards the same public, are distributed through the same channels and are complementary to each other.

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 are directed at the public at large (e.g. home owners) and at business customers with specific professional knowledge or expertise (e.g. architects).

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

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.

Although average consumers normally perceive a mark as a whole and do not proceed to analyse its various details, they 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).

In the present case, the beginning of the verbal elements, ‘Profi’ of the earlier mark and ‘PROFIL’ of the contested sign, might be dissected from the signs by parts of the relevant public (e.g. the German-speaking public), for who they have a meaning. However, for other parts of the public, these components won’t have any meaning. In this regard, reference is made to a judgement of the General Court (06/04/2017, T‑178/16, Policolor (fig.) / ProfiColor (fig.), EU:T:2017:264, § 53). In relation to the public of the European Union, the Court concluded that ‘it is very unlikely that the element ‘profi’ will be understood by a significant part of the relevant public as referring to the word ‘professional’ given that that word begins with the group of letters ‘profe’ and not with the group of letters ‘profi’ in most languages of the European Union …’. Considering the above, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public for which neither ‘Profi’ nor ‘PROFIL’ will be understood, such as Spain.

The earlier mark is a figurative mark depicted in a fairly standard font, consisting of the verbal element ‘Profiled’. However, in the context of the relevant goods, the majority of the relevant public is likely to dissect the verbal element into ‘Profi’ and ‘led’, because ‘led’ (at the end of the verbal element) has a clear meaning. The component ‘Profi’ won’t be associated with any meaning (see above) and, therefore, has a normal distinctiveness. The relevant public will understand the component ‘led’ as a common reference to ‘a light-emitting diode’ (information extracted from Dictionary of the Real Academia Española on 31/08/2020 at https://dle.rae.es/led?m=form). Taking into account that the relevant goods are all related to luminaires, ‘led’ will be understood as a mere descriptive reference to the nature and/or type of use of the goods in question. Therefore, this component is non-distinctive. Although the earlier mark is a figurative mark, on account of its stylisation, the stylisation is minimal and will have hardly any impact on the consumers’ perception.

The contested sign is a figurative mark consisting of the verbal components ‘PROFIL’ and ‘LED’ depicted in a rather standard font, divided by a figurative component reminiscent of Greek or Roman decoration. As regards the figurative component, the Opposition Division considers it unlikely that the relevant public will identify any letters, not even ‘IST’, as claimed by the applicant. Even in the unlikely event that parts of the relevant public may perceive any letters in the figurative component, the fact remains that a significant part of the public will not. For this public, this component remains merely decorative with little impact on their perception of the mark. As mentioned above, the relevant public under analysis will not attach any meaning to the verbal component ‘PROFIL’, whereas, it will understand the meaning of ‘LED’. In this regard, the same considerations apply, as those for the earlier mark. The component ‘LED’ has no distinctiveness for the relevant goods, whereas ‘PROFIL’ has a normal distinctiveness.

There are no dominant elements in the signs. Although, 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). In addition, 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.

Visually, the signs coincide in the string of the letters ‘PROFI*LED’. All the letters of the earlier mark are contained in the same order in the contested sign and the signs are similar lengths (eight letters versus nine letters). The signs differ in the figurative component and additional letter ‘L’ before it, in the contested sign, and in their structures. They also differ in their stylisation; the letters of the earlier mark are mainly lower case and in the contested sign, upper case. The figurative component and the stylisation of the marks have been found to have little impact on the consumers’ perception. Taking into account the abovementioned, in particular that the signs coincide in their beginnings, and despite the fact that the component ‘LED’ is non-distinctive, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘PROFI*LED’ and differs only in the sound of the additional letter ‘L’ placed before the figurative component in the contested sign. Although the component ‘LED’ is non-distinctive, the signs coincide in the majority of their letters, including within their respective beginnings. Therefore, the signs are aurally similar to a high degree.

Conceptually, neither of the signs has a meaning as a whole. Although the coinciding component ‘LED’ will evoke a concept, it is not sufficient to establish any conceptual similarity, as this component is non-distinctive and cannot indicate the commercial origin. The attention of the relevant public will be attracted by the additional fanciful verbal components, which have no meaning for the public under analysis. 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.

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. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of the non‑distinctive component ‘LED’, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

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).

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.

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) and that 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).

In the present case, the goods are partly identical and partly similar. They target the public at large and business customers. The degree of attention may vary from average to high and the earlier mark enjoys a normal degree of distinctiveness.

The signs coincide to a large extent. The letters of the verbal element in the earlier mark are entirely incorporated in the contested sign. The signs only differ in their figurative aspects (their structure, stylisation and the figurative component of the contested sign). They also differ in the additional letter ‘L’ placed before the figurative component of the contested sign. These, however, have a limited impact on the consumers’ perception. Although the shared verbal component ‘LED’ is non-distinctive, the signs still coincide in the majority of letters within their distinctive beginnings, which is usually the part that catches the consumers’ attention. Conceptually, for the public under analysis, the signs do not refer to any particular distinctive concepts that could further help consumers to distinguish between them.

Considering the above, there is a likelihood of confusion on the part of the Spanish-speaking public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 16 455 446. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier European Union trade mark registration No 16 455 446 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods 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

Boyana NAYDENOVA

Holger Peter KUNZ

Christian STEUDTNER

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.