OPPOSITION No B 2 415 571
Pelican Products Inc., 23215 Early Avenue Torrance, California 90505, United States of America (opponent), represented by Charles Russell Speechlys LLP, 5 Fleet Place, London EC4M 7RD, United Kingdom (professional representative)
a g a i n s t
Global Tech China Limited, 7 Abbey Square Chester CH1 2HU, Chester, Cheshire West and Chester CH1 2HU, United Kingdom (applicant), represented by Trade Mark Direct, 4 Grove Park Studios, 188-192 Sutton Court Road, Chiswick, London W4 3HR, United Kingdom (professional representative).
On 07/09/2016, the Opposition Division takes the following
2. The opponent bears the costs, fixed at EUR 300.
opponent filed an opposition against all the goods
European Union trade mark application No
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 goods on which the opposition is based are, inter alia, the following:
Class 11: Apparatus and installations for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes; flashlights; torches; flashlights utilising electric rechargeable devices; lamps; light bulbs; luminous tubes for lighting; light diffusers.
After two limitations filed by the applicant on 16/04/2015 and on 16/06/2015 the contested goods are the following:
Class 11: Floodlights; the aforesaid goods not being used in the automotive industry.
The contested floodlights; the aforesaid goods not being used in the automotive industry are included in the broad category of the opponent’s apparatus and installations for lighting. Therefore, they are identical.
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 also at business customers with specific professional knowledge or expertise. The degree of attention is average.
Earlier trade mark
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).
Both marks are word marks. The earlier mark consists of the word ‘MITYLITE’ while the contested mark is made of the two words ‘Hylite Mightylite’. The Opposition Division notes that where both marks are registered as word marks, the typeface actually used by the respective office in the official publication (e.g. the EUTM Bulletin) is immaterial. Differences in the use of lower or upper case letters are immaterial, even if lower case and upper case letters alternate.
None of the marks has a meaning per se in any part of the relevant territory. However, it cannot be excluded that the English-speaking part of the public will grasp the meaning of the elements ‘LITE’ in both marks as (of food and drink) containing few calories or little alcohol or fat and that it will recognize the word ‘Mighty’ within the word ‘Mightylite’ of the contested mark, in the sense of ‘having or indicating might; powerful or strong’, and the word ‘Mity’ in the earlier mark in the sense of ‘having or beset with mites’.
However, independently on the possible meanings of the marks or parts of them, the Opposition Division deems that the marks have no elements that could be considered clearly more distinctive or more dominant (visually eye-catching) than other elements.
Visually, the signs coincide in the two letters ‘MI’ and in the six letters ‘TYLITE’ which together constitute the whole of the earlier mark and are the first two and the last six letters of the word ‘Mightylite’ of the contested mark. However, they differ in the additional third and fourth letter ‘GH’ of the second word of the contested sign and in the first word ‘Hylite’ of the contested sign. Therefore, the signs are visually similar to a low degree.
Aurally, for non-English speakers the marks are pronounced in the same manner as regards the letters they have in common, namely the letter ‘M-I-T-Y-L-I-T-E’. The pronunciation differs in the word ‘Hylite’ of the contested sign and in the additional letters ‘GH’ placed in the middle of the word ‘Mightylite’ of the contested sign. Account must be taken on the fact that the sound of the letters ‘Hylite’ to a certain extent echoes the sounds of some of the letters of the word ‘Mightlylite’. As regards the English-speaking what has been stated above is also valid, with the exception of the difference in the pronunciation of the letters ‘MITY’ of the earlier mark and ‘MIGHTY’ of the contested mark which displays a slight difference in the way their first syllable is pronounced.
Keeping in mind what has been explained, the Opposition Division is of the opinion that the signs are overall aurally similar to an average degree, independently on the language spoken by the relevant public.
Conceptually, for the English-speaking part of the relevant public the marks are not similar at least to the extent that the words ‘Mighty’ and ‘Mity’ will be recognized but have no counterparts. It is also true that parts of both signs, namely the letters ‘LITE’, will evoke the same meaning.
On the other hand, for the non-English speaking part of the relevant public, neither of the signs has a meaning. 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.
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, within the time limit of 18/04/2015 set by the Office on 13/02/2015 following a request of extension filed by the opponent, 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 in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.
Global assessment, other arguments and conclusion
The goods covered by the trade marks in dispute have been found to be identical. The signs are similar both from a visual and an aural point of view. The distinctiveness of the earlier mark must be seen as normal, as well as the level of attention of the public.
As pointed out in the section c) of the present decision, it is true that the signs share some similarities both form a visual and aural perspective as well as, conceptually, from the perspective of the English-speaking public. However, it is the opinion of the Opposition Division that these similarities are offset by the several components that clearly differentiate the marks.
In particular, the marks only share some elements of one of the two words of the contested sign. In fact, the words ‘MITYLITE’ and ‘Mightylite’ are different not only in their length, but also, and this is especially true for the English-speaking part of the public, in the way they are pronounced. This circumstance counterbalances the limited conceptual coincidence, again only perceivable by the English-speaking consumers, arising from to the presence of the concept that will be linked to the common element ‘LITE’.
Also, the contested mark contains an additional word, namely ‘Hylite’, which per se has no meaning for the whole of the relevant public. Again, it is true that the English-consumers will recognize a meaning in the second part of it, namely the letters ‘LITE’. However, this word plays an independent, distinctive role, in the overall structure of the mark. It would be therefore far-fetched to believe that simply because the earlier mark possesses some resemblances with the second word of the contested mark there is a likelihood of confusion.
On the contrary, considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.
Given that the opposition is not well founded under Article 8(1) EUTMR it is unnecessary to examine the evidence of use filed by the opponent.
For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR because the signs are obviously not identical.
According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.
Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.
According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
Michele M. BENEDETTI-ALOISI
According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.
The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.