OPPOSITION No B 3 103 573

Carmelo Di Sano, viale Liguria 23, I-20143 Milano, Italy, Salvatore Di Sano, via dei Guarneri 24, I-20120 Milano, Italy, and Biagio Di Sano, via Puccini 56, I-20045 Besana Brianza (Monza Brianza), Italy (opponents), represented by Dott. ing. prof. Alfredo Raimondi S.R.L., Piazzale Cadorna, 15, 20123 Milano, Italy (professional representative)

a g a i n s t

Lightenjin II - Indústria de Iluminação Lda., Parque Empresarial do Casarão, Avenida da 2 Rodas, Lote 36A, 3750-041 Aguada de Cima, Portugal (applicant) represented by Cristina Costa Ferro, Av António Augusto de Aguiar, 15 - 1º, Dto, 1050-012 Lisboa, Portugal (professional representative).

On 02/12/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 103 573 is upheld for all the contested goods.

2. European Union trade mark application No 18 104 921 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 18 104 921 for the figurative mark . The opposition is based on, inter alia, European Union trade mark registration No 5 105 242 for the figurative mark . The opponent invoked Article 8(1)(a) and (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 5 105 242.

a) The goods

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

Class 11: Apparatus for lighting, in particular lamps, chandeliers, screens for lamps, lights, lamp holders, Chinese lanterns; apparatus for ventilation and in particular Chinese lanterns.

The contested goods are the following:

Class 11: Lighting apparatus; Electric lamps; Industrial lighting fixtures; Decorative electric lighting apparatus; Lighting apparatus and installations; Flat panel lighting apparatus; Lighting fixtures for commercial use; Computer controlled lighting apparatus; Solar cell lighting apparatus; Light-emitting diodes [LED] lighting apparatus; Light diffusers; Outdoor lighting; Decorative lights; Lighting and lighting reflectors; Garden lighting; Light assemblies; Display lighting; Lamp posts; Wall lights; Lighting fittings; Lighting tracks [lighting apparatus]; Lighting panels; Emergency lighting; Floodlights; Lighting installations; Security lighting; Lighting armatures; Luminous tubes for lighting; Spot lights for household illumination; Electrical lighting fixtures; Decorative lighting sets; Outdoor lighting fittings; Architectural lighting fixtures; Electric fairy lights; Electrical lamps for indoor lighting; Emergency lighting installations; Ceiling lights; Electric indoor lighting installations; Lighting for display purposes; Lighting devices for showcases; Electric track lighting units; Lighting fixtures for household use; Outdoor electrical lighting fixtures; Electrical lamps for outdoor lighting; Accent lights for indoor use; LED lighting installations; Uplighters; Organic light emitting diodes (OLED) lighting devices.

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

The term ‘in particular’ used in the opponent’s list of goods indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

The contested lighting apparatus; electric lamps; industrial lighting fixtures; decorative electric lighting apparatus; lighting apparatus and installations; flat panel lighting apparatus; lighting fixtures for commercial use; computer controlled lighting apparatus; solar cell lighting apparatus; light-emitting diodes [LED] lighting apparatus; light diffusers; outdoor lighting; decorative lights; lighting and lighting reflectors; garden lighting; light assemblies; display lighting; lamp posts; wall lights; lighting fittings; lighting tracks [lighting apparatus]; lighting panels; emergency lighting; floodlights; lighting installations; security lighting; lighting armatures; luminous tubes for lighting; spot lights for household illumination; electrical lighting fixtures; decorative lighting sets; outdoor lighting fittings; architectural lighting fixtures; electric fairy lights; electrical lamps for indoor lighting; emergency lighting installations; ceiling lights; electric indoor lighting installations; lighting for display purposes; lighting devices for showcases; electric track lighting units; lighting fixtures for household use; outdoor electrical lighting fixtures; electrical lamps for outdoor lighting; accent lights for indoor use; LED lighting installations; uplighters; organic light emitting diodes (OLED) lighting devices are identical to the opponent’s apparatus for lighting, in particular lamps, chandeliers, screens for lamps, lights, lamp holders, Chinese lanterns either because they are identically contained in both lists (including synonyms) or because the opponent’s goods include the contested goods.

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 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 higher than average, 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.

The Opposition Division notes that, since both signs comprise the letter sequence ‘LUCE’, it cannot be excluded that part of the public in the European Union, such as part of the Spanish-speakers, will perceive the sequence of letters ‘LUCE’ in the signs as being the grammatical form of the verb ’Lucir, meaning ‘shine brightly and intensively’. As for the part of the public that will so dissect, this element has a reduced distinctiveness in connection with the relevant goods in Class 11, as it alludes to the fact that the goods shine brightly and intensively. However, for other parts of the public, such as the Bulgarian- and Polish-speaking parts of the public, the element ‘LUCE’ has no meaning. Therefore, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public for which the element ‘LUCE’ is meaningless, such as the Bulgarian- and Polish-speaking public, as this may increase the likelihood of confusion in the present case. This is because this element would be fully distinctive for this parts of the public.

The verbal element of the earlier mark ‘ARCLUCE’, depicted in relatively standard black upper case letters, will be perceived as a meaningless, fanciful term and is, therefore, distinctive.

The contested sign consists of the verbal element ‘ArchLuce’ in black letters, where the letters ‘Arch’ are depicted in slightly thinner letters than the letters ‘Luce’. The letters ‘A’ and ‘L’ are in uppercase whereas the remainder are in lower case. The verbal element ‘ArchLuce’ is not likely to be dissected into two parts by the public under analysis, particularly because it does not include words known to them. Furthermore, the mixed upper and lower case and mixed thin/bold typeface in the contested sign will be perceived as essentially decorative by this part of the public, and will not draw the consumer's attention away from the verbal element as such.

Visually, the signs coincide in the letter sequence ‘ARC*LUCE’, which constitutes the entirety of the earlier mark and the largest part of the contested sign (7 letters out of 8) and they also have the same colour. The verbal elements of the signs differ in only one letter, namely ‘h’, placed towards the middle part of the contested sign. It must be pointed out that 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. The signs also differ in their typeface and the thin/bold letters in the contested sign, which however have a reduced impact for the reasons explained above.

Therefore, taking all the above into account, the signs are visually highly similar.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛Arc*luce’ present identically in both signs. The pronunciation only differs in the sound of the additional letter ‘h’ of the contested sign, which has no counterpart in the earlier mark. The Bulgarian-speaking part of the public will pronounce the first letter ‘C’ in the earlier mark as /k/ and the ‘CH’ in the contested sign would be pronounced either as /ch/ or as /h/, but can also be pronounced as /k/, by part. For other parts of the public under analysis, such as the Polish-speakers, there is a difference in the pronunciation of the letter ‘C’ and the letters ‘CH’, since the letter ‘C’ is pronounced as /ts/ and the letter string ‘CH’ is a diagraph pronounced as a soft h. However, since these aural differences between ‘ARCLUCE’/’ARCHLUCE’ described above fall in the middle of the terms, they may not be easily perceived.

Therefore, bearing in mind all the above, the signs are considered to be aurally similar to at least a high degree.

Conceptually, neither of the signs has a meaning for the public under analysis in the relevant territory. 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 under analysis. 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 which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 11 of the EUTMR). 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).

As concluded above, the contested goods are identical to the opponent’s goods. They target both the public at large and the professional public for which the degree of attention may vary from average to higher than average.

For the public under analysis the signs have been found visually and aurally at least highly similar. This is because they only differ in one additional letter present towards the middle part of the contested sign, and in their typeface and the thin/bold letters in the contested sign, which all however have a reduced impact for the reasons explained above. Furthermore, the earlier mark has a normal distinctiveness, and the signs have no conceptual meaning that would help the consumer to distinguish them.

Taking all the above into account, the Opposition Division considers that the differences between the signs are clearly not sufficient to outweigh the assessed similarities between them.

Taking this into consideration and 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), there is a likelihood of confusion on the part of the public under analysis, namely the Bulgarian- and Polish-speaking public in the relevant territory. 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. This conclusion is also true even considering that the degree of attention of the relevant consumers in relation to some of the goods at issue may be higher than average.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 5 105 242. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier European Union trade mark registration No 5 105 242 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).

Likewise, since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(1)(a) EUTMR.

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

Martin INGESSON

Anna ZIÓŁKOWSKA

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.