OPPOSITION Nо B 3 126 126

 

Cree, Inc., 4600 Silicon Drive, 27703 Durham, United States of America (opponent), represented by Best Rechtsanwälte, Hostatostr. 26, 65929 Frankfurt am Main, Germany (professional representative) 

 

a g a i n s t

 

Zhuhai Crealight Semi-Conductor Technology Co., Ltd., 5/f, Keyan Building, No. 10 Jinzhou Road, Jinding Technology Industrial Park, Tangjiawan, Zhuhai, Guangdong, People’s Republic of China (applicant), represented by AL & PARTNERS S.R.L., Via C. Colombo Ang. Via Appiani (Corte del Cotone), 20831 Seregno (MB), Italy (professional representative).

On 17/08/2021, the Opposition Division takes the following

 

 

DECISION:

1.	Opposition No B 3 126 126 is partially upheld, namely for the following contested goods: Class 10: Lamps for medical purposes. Class 11: Lamps.
2.		European Union trade mark application No 18 225 006 is rejected for all the above goods. It may proceed for the remaining goods and services.
3.			Each party bears its own costs.

REASONS

 

On 15/07/2020, the opponent filed an opposition against some of the goods and services of European Union trade mark application No 18 225 006 (figurative mark), namely against some of goods and services in Classes 10, 11 and 35. The opposition is based on international trade mark registrations designating the European Union No 1 332 405, (figurative mark) and No 1 493 514, ‘CREE LIGHTING’ (word 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 international trade mark registration designating the European Union No 1 493 514, ‘CREE LIGHTING’.

a) The goods and services

 

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

 

Class 11: Lighting apparatus, namely, LED lighting fixtures, LED lighting fixtures for indoor and outdoor lighting applications, LED lighting fixtures for use in display, commercial, industrial, residential, and architectural accent lighting applications, and LED landscape lights; lighting fixtures, namely, interior and exterior lighting fixtures; light bulbs; LED lamps; spotlights; simulated skylight fixtures; indoor LED lighting apparatus simulating natural outdoor lighting conditions.

The contested goods and services are the following:

 

Class 10: Lamps for medical purposes.

Class 11: Lamps; Ultraviolet ray lamps, not for medical purposes; germicidal lamps for purifying air.

Class 35: Advertising; publicity; television advertising; online advertising on a computer network; import-export agency services; provision of an on-line marketplace for buyers and sellers of goods and services; sales promotion for others; marketing.

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

 

The term ‘namely’ used in the opponent’s list of goods 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 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.

 

Contested goods in Class 10

The contested lamps for medical purposes include lamps for medical examination (i.e. those emitting visible light) and therefore have a similar nature to the opponent’s LED lamps in Class 11. They have the same method of use and are likely to be produced by the same companies, which have expertise in the same area (as also shown by the opponent). They are, therefore, similar.

Contested goods in Class 11

The contested lamps include, as a broader category, the opponent’s LED 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.

Contrary to the opponent’s view, the contested ultraviolet ray lamps, not for medical purposes and germicidal lamps for purifying air are used for the treatment of air with ultraviolet rays. They can also be used for the inactivation of bacteria, viruses, and protozoa or to produce ozone for water disinfection. Therefore, they have no connection with the opponent’s goods in Class 11 (which are mainly lighting apparatus). Despite being sometimes referred to as ‘lamps’, they are not used for lighting purposes. They are not fitted or used in close connection with any of the opponent’s goods. They have a clearly different nature and purpose. It is true that, as indicated by the opponent, the manufactures may coincide in some occasions. However, in general, the public see that the contested goods are sold as self-contained apparatus and originate from specialised undertakings dealing with sterilisation equipment that inactivates bacteria, viruses etc. Therefore, it is likely that the public will think that the goods do not have the same usual origin or follow the same distribution channels. Furthermore, germicidal and ultraviolet light lamps are neither complementary nor in competition with the opponent's goods. Therefore, they are dissimilar to all of the opponent's goods in Class 11.

Contested goods in Class 35

The contested advertising; publicity; television advertising; online advertising on a computer network; provision of an on-line marketplace for buyers and sellers of goods and services; sales promotion for others; marketing mainly refer to the provision of assistance to others in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing the client’s position in the market and acquiring competitive advantage. The contested import-export agency services refer to the provision of information on custom formalities to undertakings wishing to export or import goods from third countries. These contested services have nothing in common with the opponent’s goods in Class 11 (which mainly refer to specific types of lighting apparatus). The mere fact that all companies promotes or advertise their own products is not sufficient to find similarity. The services in Class 35 are rendered by advertising agencies which design campaigns for third parties and export or import companies. Therefore, they are dissimilar.

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 general public at large or business customers with specific professional knowledge or expertise (for example, in the medical field).

The public’s degree of attention may vary from average (e.g: standard lamps) to high (e.g: street lamps), depending on the price or sophistication of the goods purchased. 

c) The signs

 

CREE LIGHTING
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 earlier mark’s verbal element ‘LIGTHING’ and the contested sign’s verbal element ‘light’ are meaningful in the territories where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public in the relevant territory given that their perception will have an influence on the level of similarity between the signs.

The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details. However, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57). In this case, in view of the relevant goods, it is likely that the relevant public will dissect the verbal element of the contested sign between ‘Crea’ and ‘light’.

Both ‘LIGHTING’ and ‘light’ will be associated by the relevant public with ‘provide with light or lighting; illuminate’ (information extracted from Lexico Dictionary at https://www.lexico.com/definition/light on 09/08/2021). Therefore, they are non-distinctive for the relevant goods in Classes 10 and 11, as they describe their nature and function.

The verbal elements ‘CREE’ and ‘Crea’ are meaningless for the relevant goods and, therefore, they are distinctive.

The contested sign contains a figurative element depicting a human face bearing a star, inside a black circle. In addition, the dot in the letter ‘i’ of the verbal element’s ‘Crealight’ has been replaced by another star. Both elements will be perceived by the public as a decorative element and, therefore, although distinctive, with a lower impact.

The typeface of the contested sign’s verbal elements will merely be perceived as a graphical way of bringing the verbal elements to the relevant public’s attention and its impact on the comparison of the signs is, therefore, limited.

The contested sign has no element that can be considered clearly more dominant (visually outstanding) than other elements.

Visually and aurally, the signs coincide in the string of letters/ sounds ‘CRE* LIGHT***’, which entails the majority of the letters/sounds of the signs (in particular, 8 out of the 12 letters/sounds of the earlier mark). In addition, it should be noted that there is hardly (if any) aural differences between the verbal elements ‘CREE’ and ‘Crea’ for the public under analysis.

The earlier mark’s final string of letters/sounds ‘ing’ (which has no counterpart in the contested sign) will be associated by the relevant public as the gerund of the – in this case non-distinctive - verb ‘light’ and, therefore, has very limited impact, if any.

The signs also differ in the figurative element of the contested sign and its typeface, which have less impact on the public. 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).

Therefore, the signs are visually similar to an average degree and aurally highly similar.

Conceptually, the signs are dissimilar because they overlap in a non-distinctive element and the differentiating elements convey different distinctive concepts. Therefore, the overlap has no impact.

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.

According to the opponent, the earlier trade mark is well known and enjoys a high degree of distinctiveness as result of its long standing and intensive use in the European Union in connection with some of the goods on which the opposition is based, namely LED products.

This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).

The opponent submitted the following evidence:

 Appendix 1: An undated printout from the opponent’s European website (www.creelighting-europe.com) (despite a reference to the ‘ILP Summit 2019’).

 Appendix 2: Information about various tours and events in which the opponent participated between the years 2014 and 2018. The sign appears in some of the screenshots of the websites contained in this Appendix (such as the extracts of the websites cree.com/events/luxlive-2016 or https://light-building.messefrankfurt.com/frankfurt).

 Appendix 3: A document (in German) which, according to the opponent, contains a list of the largest LED manufacturers in the world in 2017 in terms of turnover (in which the opponent appears in sixth position).

 Appendix 4-6: Extracts from third parties’ websites (in German and apparently without date) which, according to the opponent’s explanations, show that ‘CREE has become known to the relevant consumers in the EU’. According to the opponent’s translations, the websites contain statements such as ‘Cree is one of the leading LED manufacturers in the world and well-known for its high-quality and temperature-resistant High-Power LEDs’ or ‘Cree LED Fashlight is increasingly used in flashlight product test and product descriptions’.

 Appendix 7: Extracts from the opponent’s website www.creelighting-europe-com/en in which the sign appears in the header (undated).

Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a high degree of distinctiveness through its use.

The evidence filed by the opponent demonstrates some use of the earlier mark. This use can be appreciated in the screenshots of websites referring to the tours and events in which the opponent has participated (contained in Appendix 2) or in the third parties’ websites included in Appendix 4-6. However, it fails to establish that the earlier mark has achieved an enhanced degree of distinctiveness.

The documentation consists of information concerning the company, its activities and where its lighting products can be purchased as well as general information from third parties. Only Appendix 7 clearly contains the earlier mark ‘CREE LIGTHTING’.

None of this documentation sheds any light on the degree of recognition of the mark for the relevant goods. There is an absence of information concerning sales revenue or advertising expenditure so it cannot be deduced whether or not there is a degree of knowledge concerning the mark due to intense use for example.

In the absence of any substantial evidence regarding commercial volumes and consumer recognition in the relevant territory, such as independent consumer surveys, proof of market share, etc., it clearly fails to unequivocally prove that the mark has acquired a high degree of distinctiveness.

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.

e) Global assessment, other arguments and conclusion

The goods and services are partly identical or similar and partly dissimilar. They target the public at large and business customers. The public’s degree of attention may vary from average to high. The distinctiveness of the earlier mark is normal.

The signs are visually similar to an average degree, aurally highly similar and conceptually dissimilar on account of the coincidence in the string of letters/ sounds ‘CRE*LIGHT***’. They differ in the remaining letters/sounds as well as in the figurative element and typeface of the contested sign (which have less impact on the public).

It should be noted 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).

Considering the above, there is a likelihood of confusion on the English-speaking part of the 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 partly well founded on the basis of the European Union trade mark No 1 493 514 ‘CREE LIGHTING’. It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to those of this earlier right.

The rest of the contested goods and services 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 and services cannot be successful.

Since the opposition is not fully successful based on this earlier mark, the Opposition Division will continue its assessment with regard to the other earlier mark invoked by the opponent in relation to the remaining contested goods and services that are dissimilar.

Examination of the opposition in relation to international trade mark registration designating the European Union No 1 332 405

The opponent has also based its opposition on the international trade mark registration designating the European Union No 1 332 405 (figurative mark).

f) The goods and services

After a limitation on 28/01/2021, the goods and services on which the opposition is based are the following:

Class 11: Limiting apparatus, namely, LED lighting fixtures, LED lighting fixtures for indoor and outdoor lighting applications, LED lighting fixtures for use in display, commercial, industrial, residential, and architectural accent lighting applications, and LED landscape lights; lighting fixtures, namely, interior and exterior lighting fixtures; light bulbs; LED lamps; spotlights.

Class 35: Online retail store services in the field of lighting; order fulfillment services, namely, mail and telephone order services in the field of lighting and electronic order processing services for others.

The remaining contested goods and services are the following:

Class 11: Ultraviolet ray lamps, not for medical purposes; germicidal lamps for purifying air.

Class 35: Advertising; publicity; television advertising; Online advertising on a computer network; import-export agency services; provision of an on-line marketplace for buyers and sellers of goods and services; sales promotion for others; marketing.

Contested goods in Class 11

Contrary to the opponent’s view, the contested ultraviolet ray lamps, not for medical purposes; germicidal lamps for purifying air have nothing in common with the opponent’s goods in Class 11 (which mainly refer to lighting apparatus). The same reasoning as for the international trade mark registration designating the European Union No 1 493 514 applies. Therefore, they are dissimilar.

The opponent’s services in Class 35 mainly refer to retail in the field of lighting. Therefore, they are dissimilar to the contested ultraviolet ray lamps, not for medical purposes; germicidal lamps for purifying air. Similarity between retail services of specific goods covered by one mark and other goods covered by another mark can only be found where the goods involved in the retail services and the other goods covered by the other mark are offered in the same outlets, belong to the same market sector and are of interest to the same consumers, conditions which, as explained, are not fulfilled in this case.

Contested goods in Class 35

The contested provision of an on-line marketplace for buyers and sellers of goods and services entails the provision of an e-commerce platform where the seller can display and offer its goods for sale to the buyer, without the platform operator being necessarily concerned about what is being sold, the price etc. Therefore, this is a passive service enabling the seller to price and put on display whichever goods it chooses to offer for sale, and just to pay a fee for the use of the space. The opponent’s online retail store services in the field of lighting are more active as the service provider will be positively engaged in the promotion of the sale of the specific goods brought together for the customer. However, it can be said that they are similar to a low degree as the relevant public may be the same (whether this is as a prospective buyer or seller) and the purpose of the services, broadly speaking, may be the same, namely to facilitate the sale of goods of others.

Contrary to the opponent’s view, the contested advertising; publicity; television advertising; online advertising on a computer network; import-export agency services; provision of an on-line marketplace for buyers and sellers of goods and services; sales promotion for others; marketing mainly refers to the provision to others of assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing the client’s position in the market and acquiring competitive advantage or providing information on custom formalities to undertakings wishing to export or import goods from third countries. Therefore, they are dissimilar to the opponent’s services in Class 35, which are retail services (defined as the action or business of selling goods or commodities in relatively small quantities for use or consumption rather than for resale).

Likewise, they have nothing in common with the opponent’s goods in Class 11. The same reasoning as for the international trade mark registration designating the European Union No 1 493 514 applies. Therefore, they are dissimilar.

g) 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 services found to similar to a low degree are directed at the public at large and business customers with specific professional knowledge or expertise. The public’s degree of attention will be relatively high as the relevant services are specialised services. In addition, the public will pay special attention to the terms and conditions of the said services.

h) 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 earlier trade mark is a figurative mark composed of the verbal element ‘CREE’ and the figurative element depicting a rhomb.

The earlier mark’s verbal element ‘CREE’ has a meaning for part of the public, for example, the French-speaking part of the public for whom it is an adjective meaning ‘created’(crée) as well as for the Spanish-speaking part of the public as the past of the verb ‘create’ (creé). As this term has no direct relation with the relevant services, it is distinctive. For the rest of the relevant public, this element is meaningless and is, therefore, distinctive.

Regarding the earlier mark’s figurative element depicting a rhomb, although distinctive, the public will perceive it as a decorative element. The typeface of the earlier mark is standard and will merely be perceived as a graphical way of bringing the verbal elements to the relevant public’s attention (and, therefore, its impact on the comparison of the signs is, therefore, limited).

The contested sign is a figurative mark composed of the verbal element ‘Crealight’ and a figurative element depicting a human face bearing a star inside a black circle. In addition, the dot in the letter ‘i’ of the verbal element’s ‘Crealight’ has been replaced by another star.

For the part of the public which does not dissect the contested sign’s verbal element, ‘Crealight’ will be meaningless and, therefore, distinctive.

However, another part of the public will dissect the contested sign’s verbal element into ‘Crea’ and ‘light’, as already explained above.

The contested sign’s verbal element ‘Crea’ will be associated in certain territories such as France, Spain or Italy with the verb ‘create’ (for example, to create or manufacture a product). As it has no direct relation with the relevant services, it is distinctive. For the rest of the relevant public, this element is meaningless and is, therefore, distinctive.

Regarding the contested sign’s verbal element ‘light’, for the English- speaking part of the public it has the meaning explained in section c) of this decision. Another part of the public (such as the Spanish- and French- speaking part of the public) will understand ‘light’ as ‘beverage or processed food with fewer calories than usual’ (for example, in connection with Spanish, information extracted from RAE Dictionary at https://dle.rae.es/light on 10/08/2021). In any case, as it has no direct relation with the relevant services, it is distinctive. For the rest of the relevant public, this element is meaningless and is, therefore, distinctive.

The figurative elements of the contested sign have no relation to the relevant services and are, therefore, distinctive. The typeface of the contested sign’s verbal elements will merely be perceived as a graphical way of bringing the verbal elements to the relevant public’s attention and its impact on the comparison of the signs is, therefore, limited.

The signs have no element that could be considered clearly more dominant than other elements.

Visually, the signs only coincide in their three first letters (CRE*****). It is true that consumers generally tend to focus on the beginning of a sign when being confronted with a trade mark. This is justified by the fact that 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.

However, it also must be recalled that, although the beginning of a sign generally has more importance than the ending in the overall impression produced by that sign, this consideration cannot prevail in all cases and cannot, in any event, undermine the principle that an examination of the similarity of the signs must take account of the overall impression produced by those signs, since the average consumer normally perceives a sign as a whole and does not examine its individual details (see judgment of 27/06/2012, T-344/09, ‘Cosmobelleza’, paragraph 52).

The signs differ in the final letter of the earlier mark (‘E’/’A’) as well as in the additional letters ‘light’ of the contested sign (which, in total, entails six out of the nine letters of the contested sign). Consequently, the signs also differ in length, namely four letters forming the earlier mark and nine forming the contested sign.

The signs also differ in their distinctive figurative elements. On the one hand, the earlier mark’s rhomb and, in the other hand the contested sign’s figurative elements depicting a human face and the two stars.

Therefore, the signs are visually similar to a low degree.

Aurally, for part of the public the pronunciation of the signs coincides in the sound of the letters ‛CRE’, present identically in both signs and differs in the sound of the last letter of the earlier mark (‛E’/ ‘A’) and in the additional sounds ‘light’ of the contested sign.

For another part of the public (such as the English-speaking part of the public) there is hardly (if any) aural difference between the verbal elements ‘CREE’ and ‘Crea’ and, therefore, the pronunciation differs in the additional sounds ‘light’ of the contested sign.

Therefore, the signs are aurally similar to a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. For the part of the public for which neither of the signs has a meaning but will perceive the figurative elements as explained above (or for the part of the public which only understand the verbal element ‘light’ and the figurative elements), the signs are not conceptually similar.

For the part of the public for which the terms ‘CREE’ and ‘Crea’ are meaningful (regardless they understand or not the term ‘light’), taking into account the additional elements, the signs will be conceptually similar to, at best, an average degree.

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

i) 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 for the relevant services (that is, the provision of an on-line marketplace for buyers and sellers of goods and services).

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 in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

j) Global assessment

The services are similar to a low degree. They target the public at large and business customers whose degree of attention is relatively high. The distinctiveness of the earlier mark is normal.

The signs have been found visually and aurally similar to a low degree. The signs are not conceptually similar or, as an alternative, are conceptually similar to at best an average degree.

This is due to the fact that the signs only coincide in three letters. The earlier mark is a relatively short mark consisting of only four letters; the fact that the signs differ in one and six letters respectively is a relevant factor to consider when evaluating the likelihood of confusion between the conflicting signs. The length of the signs may influence the effect of the differences between them.

The signs also differ in the distinctive figurative elements (and their meanings). On the one hand, the earlier mark’s rhomb and, in the other hand, the contested sign’s figurative elements depicting a human face and the two stars.

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 this case, despite the fact that the coinciding three letters are placed at the beginning of the signs, the additional letters as well as the figurative elements of the signs are clearly perceivable and sufficient to exclude any likelihood of confusion between the marks, especially taking into account the high degree of attention of the public and the low similarity between the signs.

Considering all the above, there is no likelihood of confusion on the part of the public.

Therefore, the opposition must be rejected for all the remaining goods and services, as defined in section f) of this decision on the basis of international trade mark registration designating the European Union No 1 332 405.

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 and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

 

 

The Opposition Division

 

 

Cynthia DEN DEKKER

Fernando AZCONA DELGADO

Loreto URRACA LUQUE

 

 

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.