OPPOSITION No B 3 096 407

Teconex, Société Anonyme, Rue de Magnée, 108, 4610 Beyne‑Heusay, Belgium (opponent), represented by Gevers, Brussels Airport Business Park, Holidaystraat, 5, 1831 Diegem, Belgium (professional representative)

a g a i n s t

Teco Energy Spółka z ograniczoną odpowiedzialnością, ul. Franciszka Klimczaka 8/11, 02‑797 Warszawa, Poland (applicant).

On 17/05/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 096 407 is partially upheld, namely for the following contested goods:

Class 11: Lighting and lighting reflectors.

2. European Union trade mark application No 18 077 922 is rejected for all the above goods. It may proceed for the remaining contested goods, namely:

Class 11: Nuclear installations; sun tanning appliances; igniters.

3. Each party bears its own costs.

REASONS

On 30/09/2019, the opponent filed an opposition against all the goods of European Union trade mark application No 18 077 922 for the figurative mark , namely against all the goods in Class 11. The opposition is based on the following earlier rights:

 European Union trade mark registration No 11 705 531 for the word mark ‘TECO’ (earlier mark 1);

 Benelux trade mark registration No 93 333 for the word mark ‘TECO’ (earlier mark 2);

 European Union trade mark registration No 9 868 621 for the figurative mark (earlier mark 3);

 international trade mark registration No 140 351 designating Czech Republic, Germany, Spain, France, Croatia, Italy, Hungary, Austria, Romania, Slovakia and Slovenia for the word mark ‘TÉCO’ (earlier mark 4).

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 EUTM registration No 11 705 531 (earlier mark 1).

Opposition based on earlier mark 1

a) The goods and services

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

Class 9: Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; couplings, electric; materials for electricity mains [wires, cables]; accumulators, electric; electric battery jars and boxes; plates for batteries; chargers for electric batteries; fuse wire; amplifiers; batteries, electric; cables, electric; sheaths for electric cables; junction sleeves for electric cables; transformers [electricity]; distribution boxes [electricity]; branch boxes [electricity]; branch boxes [electricity]; junction boxes [electricity]; collectors, electric; capacitors; conductors, electric; junction boxes (electricity) and switchboards; plugs, sockets and other contacts [electric connections]; electric loss indicators; couplings, electric; relays, electric; switches, electric; fuses.

Class 11: Lighting fittings; lamps; electric lamps; lamp chimneys; luminous tubes for lighting; light bulbs; light bulbs, electric; sockets for electric lights; filaments for electric lamps; magnesium filaments for lighting.

Class 35: Wholesaling, retailing and online sale of apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, electric connections, material for electricity mains (wires, cables), electric accumulators, jars and boxes for electric accumulators, plates for electric accumulators, chargers for electric accumulators, fuse wire, amplifiers, electric batteries, electric cables, sheaths for electric cables, junction sleeves for electric cables, electric transformers, distribution boxes (electricity), branch boxes (electricity), junction boxes (electricity), electric collectors, condensers (capacitors), electric conductors, electric junction boxes and switchboards, sockets, plugs and other contacts (electric connections), electric loss indicators, electric couplings, electric relays, electric switches and fuses.

The contested goods, following a partial rejection due to a decision of 11/08/2020 in parallel opposition proceedings, are the following:

Class 11: Nuclear installations; lighting and lighting reflectors; sun tanning appliances; igniters.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods 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 include, inter alia, the nature and purpose of the goods, 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.

In its submission, the opponent invoked several earlier decisions of the Office in order to support the claim that the goods and services under comparison are similar, for example, Opposition Division decision B 725 566 of 26/04/2006. In this respect, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities. This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198). The similarity between the goods and services concerns a matter of law which has to be ruled on by the Office, if need be on its own motion, since it is necessary to resolve that matter in order to ensure a correct application of Article 8(1)(b) EUTMR (15/07/2015, T‑24/13, CACTUS OF PEACE CACTUS DE LA PAZ (fig.) / CACTUS, EU:T:2015:494, § 23 and the case-law cited).

The contested lighting includes, as a broader category, the opponent’s lamps. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested lighting reflectors are identical to the opponent’s lamps, 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.

The contested nuclear installations, igniters, do not have anything in common with the opponent’s goods and services. In particular, nuclear installations are highly specialised goods, requiring very specific knowledge and technology, and target a very specific and narrow group of consumers. Igniters are devices for igniting a fuel mixture in an engine or causing an electric arc. All the aforementioned goods are dissimilar to the opponent’s goods and services in Class 9 (essentially electrical apparatus and components thereof), Class 11 (lighting fittings; lamps; electric lamps; lamp chimneys; luminous tubes for lighting; light bulbs; light bulbs, electric; sockets for electric lights; filaments for electric lamps; magnesium filaments for lighting) and Class 35 (essentially wholesaling, retailing and online sale of electrical apparatus and instruments of Classes 9 and 11). These opponent’s goods and services are different in nature, purpose and method of use, have different end users and distribution channels, furthermore, they are not complementary or in competition.

The opponent argued that sun tanning appliances are similar to various lighting apparatus as covered by its earlier mark, due to the complementary relationship between them. However, the contested sun tanning appliances are tanning apparatus, such as sun lamps, sunbeds or devices with ultraviolet rays in order to induce an artificial suntan. These goods have a different nature and purpose to any of the opponent’s goods and services in Classes 9, 11, and 35, including various apparatus for lighting in Class 11, as the lamps used in these goods and those for sun tanning appliances have different characteristics and purposes and target a different public. Contrary to the opponent’s assertions, they have different distribution channels and points of sale and they are not in competition with or complementary to each other.

In this regard, goods or services are complementary if there is a close connection between them, in the sense that one is indispensable (essential) or important (significant) for the use of the other in such a way that consumers may think that responsibility for the production of those goods or provision of those services lies with the same undertaking (11/05/2011, T‑74/10, Flaco, EU:T:2011:207, § 40; 21/11/2012, T‑558/11, Artis, EU:T:2012:615, § 25; 04/02/2013, T‑504/11, Dignitude, EU:T:2013:57, § 44). When assessing whether or not the consumer would usually expect there to be a link between the goods/services, it is appropriate to take into account the economic reality on the market as it currently exists (16/01/2018, T‑273/16, METAPORN / META4 et al., EU:T:2018:2, § 41‑42). A functional link between goods/services will usually be a strong indication of complementarity, for example, when one product or service is required for the proper functioning of the other, one enables the use of the other, or one cannot be used without the other. There may also be a link between a certain product and its parts, components and fittings. There is, therefore, complementarity when the respective part/component/fitting is sold independently and is required for proper use of the final product, and/or when the part/component/fitting cannot serve its intended purpose if it is not included in the final product. However, there will be no complementarity between a certain product and its parts, components or fittings when the goods under comparison do not target the same public (e.g. the component is meant for the manufacturer, but not for the consumer of the final product) and when the parts, components or fittings are not usually sold independently as replacement parts of the final product. Therefore, even though the parts or components, such as lighting apparatus, are indispensable or important for the proper functioning of the final product, such as sun tanning appliances, there is no complementarity between the goods under comparison. Therefore, the contested sun tanning appliances are dissimilar to the opponent’s goods and services.

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 in question.

In the present case, the goods found 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

TECO
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.

The verbal element ‘energy’ of the contested sign is meaningful or may be associated with some meanings in certain territories, for example, in those countries where English is understood. This affects that public’s perception of the signs and influences the assessment of likelihood of confusion. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The earlier mark is a word mark comprising the verbal element ‘TECO’, which has no meaning for the relevant public and is, therefore, distinctive. The protection offered by the registration of a word mark applies to the word stated in the application for registration and not to the individual graphic or stylistic characteristics that the mark might possess (22/05/2008, T‑254/06, RadioCom, EU:T:2008:165, § 43). Therefore, it is generally irrelevant whether word marks are depicted in upper- or lower-case letters. The earlier mark does not deviate from the usual way of writing, since it is written entirely in upper-case letters, which is a fairly common way of depicting words.

The contested sign is a figurative mark containing the verbal element ‘TECO’, which has no meaning for the relevant public and is, therefore, distinctive. It is depicted in slightly stylised, black upper-case letters with the exception of the letter ‘***O’, which is black and green. Underneath the verbal element ‘TECO’ is the verbal element ‘energy’, depicted in fairly standard, grey lower-case letters, which is considerably smaller than ‘TECO’. The word ‘energy’ means, inter alia, ‘dynamic quality’, ‘the capacity of acting or being active’, ‘usable power (such as heat or electricity)’ (information extracted from Merriam-Webster Dictionary on 04/05/2021 at https://www.merriam-webster.com/dictionary/energy). In the context of lighting and lighting reflectors in Class 11, it has a non-distinctive character as it could be understood as referring to the characteristics of the contested goods, namely that they use energy to function and/or that they have a dynamic quality. In addition, given its smaller size and secondary position in the contested sign, it has less impact on the overall impression. Therefore, the verbal element ‘TECO’ is considered dominant (eye-catching).

The relatively standard stylisation of the contested sign will be perceived as essentially decorative and weak, as it is usual in the market sector for a sign’s verbal elements to be slightly stylised.

Visually and aurally, the signs coincide in the verbal element ‘TECO’ and its sound, which is distinctive and comprises the sole element of the earlier mark and the first and dominant element of the contested sign. They differ in the second verbal element ‘energy’ of the contested sign and its sound, which has no counterpart in the earlier mark. However, this verbal element is non-distinctive in relation to the goods at issue and, therefore, has a limited impact on the consumers’ perception. The relevant public is likely to focus more attention on the dominant and only distinctive verbal element ‘TECO’.

In addition, the signs differ visually in the slight stylisation of the contested sign. However, as explained above, the verbal elements of the contested sign will attract the public’s attention to a greater extent, as an indicator of the commercial origin of the relevant goods.

According to case-law, the fact that one mark is entirely incorporated in the other mark establishes a certain degree of similarity between them (08/09/2010, T‑152/08, Scorpionexo, EU:T:2010:357, § 66; 08/09/2010, T‑369/09, Porto Alegre, EU:T:2010:362, § 26; 20/09/2011, T‑1/09, Meta, EU:T:2011:495; 28/09/2011, T‑356/10, Victory Red, EU:T:2011:543, § 26; 23/05/2007, T‑342/05, Cor, EU:T:2007:152; 10/11/2011, T‑313/10, Ayuuri Natural, EU:T:2011:653; 15/11/2011, T‑434/10, Alpine Pro Sportswear & Equipment, EU:T:2011:663, § 55).

Bearing all the above in mind, the signs are visually and aurally similar to a high degree.

Conceptually, although the public under examination in the relevant territory will perceive the meaning of the verbal component ‘energy’ in the contested sign as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar. However, as this differentiating verbal element is considered non-distinctive and, therefore, has less impact than the coinciding verbal element ‘TECO’, it will not introduce any significant conceptual difference between the signs. The relevant public’s attention will be attracted to the meaningless verbal element ‘TECO’ 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 claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim.

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 and services in question from the perspective of the public under examination in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) 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 that can be made with the registered mark and the degree of similarity between the marks and between the goods identified. It must be appreciated globally, taking into account all the 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).

The goods are found to be identical and dissimilar. The current examination will proceed for the identical goods only. According to case-law, when the goods covered by the signs at issue are identical, the degree of difference between the signs must be high to exclude a likelihood of confusion (13/11/2012, T‑555/11, tesa TACK, EU:T:2012:594, § 53). The earlier mark enjoys a normal degree of inherent distinctiveness.

The goods target the professional public and the public at large, and the degree of attention varies from average to high. 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). 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).

The signs are visually and aurally similar to a high degree, since the earlier mark ‘TECO’ is fully reproduced as the first and dominant verbal element of the contested sign. This element is equally distinctive, is the only element in the earlier mark and most distinctive element in the contested sign. The signs differ in the second verbal element of the contested sign, ‘energy’, which is non-distinctive and will not attract the public’s attention as much as ‘TECO’. Moreover, the signs differ in the slight stylisation of the contested sign, which is of limited importance in the overall impression created by that sign, as explained in detail above. The signs are conceptually not similar. The verbal element ‘energy’ of the contested sign, as the only concept (the only differing semantic content of the contested sign), does not have much impact, will not be afforded much trade mark significance by the public and, therefore, cannot assist consumers in distinguishing between the marks. Consequently, the differences between the signs are not sufficient to outweigh the visual and aural similarities produced by the common verbal element ‘TECO’.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public and, therefore, the opposition is partly well founded on the basis of the opponent’s EUTM registration No 11 705 531 for the word mark ‘TECO’ (earlier mark 1). 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.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical to those 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.

Opposition based on earlier marks 2, 3 and 4

f) The goods and services

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

Earlier mark 2:

Class 9: Electrical equipment and apparatus (except inverters, rectifiers, batteries and stationary), namely electrical sensors, electrical conduits, electrical outlets, electrical wiring, electrical amplifiers, electrical meters, electrical fittings; electrical equipment and apparatus (except inverters, rectifiers, batteries and stationary), namely electrical recorders, electrical circuits, electrical scales, electrical inductors, electrical reactors, electrical terminators, electrical plugs, electrical distributors, electrical fuses, electric buzzers, electric oscillators, electric switches, electric boosters, electric receivers; electrical equipment and apparatus (except inverters, rectifiers, batteries and stationary), namely electrical diodes, electrical cords, electrical connections, electrical terminals, electric circuit closers, electrical connectors, electrical ammeters, electrical regulators, electrical controls, electrical accumulators, electrical batteries, electrical coils, electrical filters, electrical transformers, electrical capacitors, electrical conductors, electrical contacts, electrical converters, electrical collectors, electrical wires, electrical relays, electrical couplings, electrical connections, electrical supply devices, devices regulated power supply, charging stations for electric vehicles; electrical equipment and apparatus (except inverters, rectifiers, batteries and stationary), namely instruments for the distribution of electrical current, apparatus for transmission through electrical cables, plates for electrical accumulators, electrical adapters, apparatus electric control boxes, electrical switch boxes, electrical circuit breakers, electrical switching devices, inverters for electrical supply, electrical circuit switches, electrical circuit breakers [switches], electrical connection boxes, electrical distribution panels, electrical circuit breakers, [electric] electricity disctributors, electric power dividers, transformers for electric networks, electric charge controllers, stabilized voltage electric power supplies, electric power distribution blocks, cost control devices electrical, control apparatus for electrical networks; electrical equipment and apparatus (except inverters, rectifiers, batteries and stationary), namely setting switches for electrical transformers, software for remote control of electric lighting equipment, earth test leads [Electrical], wireless controllers to remotely monitor and control the operation and condition of other electrical, electronic and mechanical devices or systems, electrical accumulators, fuses, electrical fuses, fuse boxes, electric fuse boxes, fuse connection units, electrical connection boards, electrical loss indicators; electrical equipment and apparatus (except inverters, rectifiers, batteries and stationary), namely, junction boxes [electricity], junction boxes [electricity], connection boxes [electricity], distribution boxes [electricity], junction sleeves for electric cables, sheaths for electric cables, cable ducts for cables [sheaths], electric batteries, uninterruptible power supplies [batteries], apparatus for recharging electric batteries, wires made of metal alloys [fuses], electric wires made of metal alloys; electrical equipment and apparatus (except inverters, rectifiers, batteries and stationary), namely material for electrical conduits [wires, cables], apparatus, instruments and cables for electricity, apparatus and instruments for control of electricity, apparatus and instruments for transforming electricity, apparatus and instruments for regulating electricity, apparatus and instruments for accumulating electricity, apparatus and instruments for accumulating and destocking of electricity.

Class 11: electrical equipment and apparatus, namely, electric lighting installations, electric lighting fixtures, outdoor electric lighting fixtures, wall lights [electric lighting accessories], electric fiber lighting fixtures, electric track lighting units, electric indoor lighting installations, electric lamps for outdoor lighting, electric lamps for indoor lighting, electric discharge tubes for lighting, electric lamps, electric bulbs, lamps for electric installations, electric discharge luminaires, electric discharge lamps, indoor electric lights, incandescent electric lamps, electric lamp filaments, electric night light fixtures.

Earlier mark 3:

Class 9: Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; couplings, electric; material for electricity mains (wires, cables); electric accumulators; electric battery jars and boxes; plates for batteries; chargers for electric batteries; fuse wire; amplifiers; batteries, electric; electric cables; sheaths for electric cables; junction sleeves for electric cables; electric transformers; distribution boxes [electricity]; branch boxes (electricity); branch boxes [electricity]; distribution and junction boxes [electricity]; electric collectors; electric condensers; electrical conductors; junction boxes (electricity) and switchboards; plugs; electric loss indicators; electric connections; electric relays; switches; fuses.

Class 11: Apparatus and installations for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes; lamps; electric lamps; lamp chimneys; luminous tubes for lighting; light bulbs; electric light bulbs; sockets for electric lights, filaments for electric lamps; filaments (magnesium -) for lighting.

Class 35: Advertising; business management; business administration; office functions; wholesaling, retailing and online sale of apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, electric couplings, materials for electricity mains (wires, cables), electric accumulators, electric battery jars and boxes, plates for batteries, chargers for electric batteries, fuse wire, amplifiers, electric batteries, electric cables, sheaths for electric cables, junction sleeves for electric cables, electric transformers, distribution boxes (electricity), branch boxes (electricity), junction boxes (electricity), electric collectors, condensers (capacitors), electric conductors, electric junction boxes and switchboards, sockets, plugs and other contacts (electric connections), electric loss indicators, electric couplings, electric relays, electric switches and fuses, apparatus and installations for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes, lamps, electric lamps, lamp chimneys; luminous tubes for lighting, light bulbs, electric light bulbs, sockets for electric lights, filaments for electric lamps, magnesium filaments for lighting.

Earlier mark 4:

Class 9: Electrical equipment and apparatus included in Class 9, namely peizoelectric sensors, conduit for electric cables, current plugs, plugs and jacks, socket outlets (Electric-), electric outlet covers, shaped, electrical plugs and sockets, network cabling, electricity meters, cable splices for electric cables, connections for electric lines, printed electrical circuit cards, electrical scales, inductors [electricity], electric reactors, electrical terminators, electrical fuses, fuse wire, electric fuse boxes, electrical fuses, switches, electric, switches, electric, electric light switches, electric switch plates, step-up transformers, electric cords, couplings, electric, electric connectors, accumulators [batteries], accumulators, electric, electric storage batteries, chargers for electric batteries, plates for batteries, grids for batteries, chargers for electric batteries, electrical cells and batteries, chargers for electric batteries, coils, electric, transformers [electricity], electric voltage transformers, electrical transformers for telecommunication apparatus, condensers [capacitors], conductors, electric, contacts, electric, converters, electric, contacts, electric, converters, electric, converters, electric, converters for electric plugs, collectors, electric, electric cables and wires, identification sheaths for electric wires, relays, electric, couplings, electric, couplings, electric, power suppliers, electric power sources, charging stations for electric vehicles, apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling the distribution or use of electricity, apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, electrical adapters, power-line transmission apparatus, electric apparatus for commutation, inverters [electricity], branch boxes [electricity], power distribution panels, electrical charge controllers, electrical power distribution blocks, electric loss indicators, junction boxes [electricity], branch boxes [electricity], distribution boxes [electricity], junction sleeves for electric cables, sheaths for electric cables, materials for electricity mains [wires, cables].

Class 11: Electrical equipment and apparatus included in Class 11, namely electric light fittings, apparatus for lighting powered by electricity, electrical light bulbs, light bulbs, electric, electric lamps, sockets for electric lights, filaments for electric lamps, discharge tubes, electric, for lighting, electrical luminaires.

Considering that the Office confirms the likelihood of confusion based on earlier mark 1 for some of the contested goods, as established above, the opposition remains directed against the following contested goods:

Class 11: Nuclear installations; sun tanning appliances; igniters.

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 opponent’s list of goods and services to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods and services specifically listed.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods and 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 and services include, inter alia, the nature and purpose of the goods and 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.

All the contested goods, namely nuclear installations, sun tanning appliances and igniters, do not have anything in common with the opponent’s goods and services. In particular, nuclear installations are highly specialised goods, requiring very specific knowledge and technology, and target a very specific and narrow group of consumers. Sun tanning appliances are quite specific in terms of production and also nature, purpose and method of use. Igniters are devices for igniting a fuel mixture in an engine or causing an electric arc. All the aforementioned goods are dissimilar to the opponent’s goods and services in Class 9 of earlier marks 2, 3 and 4 (essentially electrical apparatus and components thereof), Class 11 of earlier marks 2, 3 and 4 (essentially apparatus and installations for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes; lighting apparatus and their components and parts thereof) and Class 35 of earlier mark 2 (essentially wholesaling, retailing and online sale of the electrical apparatus and instruments in Classes 9 and 11 as well as advertising, business management, business administration and office function services). These opponent’s goods and services are different in nature, purpose and method of use, have different end users and distribution channels and, furthermore, they are not complementary or in competition.

g) Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods and services are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected insofar is it based on earlier marks 2, 3 and 4.

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

Liliya YORDANOVA

Anna PĘKAŁA

Lars HELBERT

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.