OPPOSITION No B 2 915 869

Lightpower GmbH, An der Talle 24-28, 33102 Paderborn, Germany (opponent), represented by Patentanwälte Olbricht, Buchhold, Keulertz Partnerschaft mbB, Bettinastraße 53-55, 60325 Frankfurt/Main, Germany (professional representative)

a g a i n s t

Cheng Xiang Xiong, No. 7, LaoXia Village, Heshui Branch of Taiping Reclamation Farm, Wanli District, Nanchang, Zhejiang, China (applicant), represented by Patendibüroo Käosaar Oü, Tähe 94, 50107 Tartu, Estonia (professional representative).

On 27/09/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 915 869 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 16 457 723 for the word mark ‘LIGPOWER’. The opposition is based on European Union trade mark registration No 11 038 924 for the figurative mark . The opponent invoked Article 8(1)(b) EUTMR.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

1. The goods and services

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

Class 6: Framework of metal for building; Steel ropes, Sleeves, Clamps, Suspension cables, fixings and fastenings for spotlights etc, material for stage construction and rigging materials (all of the aforesaid goods being of metal); Goods of metal (included in class 6) for construction of stages, theatres, congresses and exhibition stands, halls, including for use in multi-purpose halls and sports halls, rails of steel, aluminium; Mobile and height-adjustable constructions of metal, in particular stage platforms, manually operated, and mobile stages of metal with accessories, namely stairs and railings; Crossbeam constructions of steel and aluminium; Superstructures (constructions) and roofs of metal, installable so as to be mobile or fixed; Mobile stage canopies and stage trailers (constructions) of metal; Stands of metal, installable so as to be mobile or fixed, stepped stairs of metal installations, telescopic stands of metal; Acoustic walls of metal, installable so as to be mobile or fixed; Mobile dance floors and multifunctional floors of metal; Accessories and connectors (included in class 6) for the aforesaid goods.

Class 9: Measuring, regulating, signalling and checking (supervision) apparatus and instruments; Apparatus for recording, editing, transmission and reproduction of sound, images, data and lighting effects; Electric and electronic apparatus and installations for controlling light signals, lighting effects and light shows; Electric and Electronic controllers and Control apparatus for lighting installations, head lamps, Lights and Dimmers; Light control panels and consoles; Digital dimmers (light regulators); Electric and electronic apparatus and installations for the editing, amplification, copying, mixing, conversion and transmission of control data and control signals; Stage lighting regulators; Power suppliers, Current distributors; Current limiters for lighting apparatus; Conductor rails for spotlights; Data-processing equipment and computers; Stored and downloadable computer software for control of lighting signals, lighting effects and light shows; Stored and downloadable computer software for visualising stage shows and for designing three-dimensional stage layouts; Projection apparatus.

Class 11: Lighting apparatus and installations; Lighting installations, lights and spotlights for theatre, studio, trade fair, exhibition, architecture and stage use; Lamps; Lighting apparatus utilising light emitting diodes (LEDs);Apparatus for changing the colours of lighting apparatus and lighting installations; Guard devices for lighting; Sockets for electric lights.

Class 42: Design, development and updating of computer hardware and software; Hardware and software consultancy; Implementation of computer programs on networks; Configuring computer networks by means of software.

The contested goods are the following:

Class 7: Agricultural machines; turbines other than for land vehicles; hemming machines; electric screwdrivers; alternators; dynamo brushes; bicycle dynamos; carbon brushes (electricity); starters for motors and engines; dynamos; stators (parts of machines); aeroplane engines; driving motors other than for land vehicles; jet engines other than for land vehicles; belts for motors and engines; fans for motors and engines; aeronautical engines; motors for boats; motors, other than for land vehicles; bearings (parts of machines).

Class 28: Scale model vehicles; scooters (toys); radio-controlled toy vehicles; scale model kits (toys); toy models; controllers for toys.

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 7

The opponent’s goods and services include metal materials for building and construction in Class 6, measuring, regulating, signalling and checking (supervision) apparatus and instruments and apparatus for recording, editing, transmission and reproduction of sound, images, data and lighting effects, electrical goods and data processing equipment and computers in Class 9, lighting apparatus and installations in Class 11 and design, development and updating of computer hardware and software and consultancy in Class 42.

The contested goods are agricultural machines, engines and machine parts, machines tools for treatment of materials and generators for electricity. These goods and the opponent’s goods and services in Classes 6, 9,11 and 42 are different in nature and they are marketed through different distribution channels and usually do not have the same commercial origin. Furthermore, there is no complementarity or interchangeability either. Therefore, they are considered to be dissimilar.

In its arguments, the opponent claims that the contested alternators; dynamo brushes; bicycle dynamos are highly similar to the opponent’s, inter alia, electric and electronic apparatus and installations for controlling light signals. The applicant states that the contested goods are intended to supply electronic equipment with electricity or to deliver electricity to a light source. However, the aforementioned contested goods are all generators of electricity to convert mechanical energy into electrical energy that are commonly used in vehicles. The mere fact that these goods are used to generate electrical energy does not suffice to find similarity between them and those of the opponent; they differ in nature, purpose and method of use. Moreover, the contested goods are not in competition nor complementary to the goods of the opponent. Finally, they have different distribution channels and are not normally produced or provided by the same companies.

The opponent also argues that the contested fans for motors and engines are similar, inter alia, to the opponent’s apparatus for recording, editing, transmission and reproduction of sound, images, data and lighting effects or that the contested carbon brushes (electricity); stators (parts of machines); driving motors other than for land vehicles; motors, other than for land vehicles are similar, inter alia, to electric and electronic controllers and control apparatus for lighting installations. In support of its argumentation the opponent claims that the opponent’s goods optionally include fans for the regulation of electric heat or that professional light shows comprise motors to move the light source. However, the mere fact that a certain product can be composed of several components does not automatically establish similarity between the finished product and its parts (judgment of 27/10/2005, T-336/03, Mobilix, EU:T:2005:379, § 61). Similarity will only be found in exceptional cases and requires that at least some of the main factors for a finding of similarity, such as producer, public and/or complementarity are present, which is not the case here.

Consequently, all the opponent’s arguments are to be set aside.

Contested goods in Class 28

The contested scale model vehicles; scooters (toys); radio-controlled toy vehicles; scale model kits (toys); toy models; controllers for toys are amusement and game apparatus, including controllers. Contrary to the opponent’s arguments, as stated above, the mere fact that the contested goods have electrical and electronic components, does not automatically establish similarity between the finished product and its parts (judgment of 27/10/2005, T-336/03, Mobilix, EU:T:2005:379, § 61). For the sake of completeness, the opponent’s electric and electronic controllers and control apparatus for lighting installations in Class 9 are electric controllers and, as such, they are used as technical equipment concerned with controlling the operation of lighting installations with no relevant points of contact with the contested controllers for toys.

Reference is made to the previous assertions on the goods protected by the earlier mark in Classes 6, 9, 11 and 42. None of these goods and services coincides in any relevant points of contact with the contested goods. The contested goods have a different nature and purpose, and they are usually provided by different producers. They do not target the same relevant public, neither use the same distribution channels. Furthermore they do not share a complementary nature nor are they in competition with one another.

Therefore, the contested scale model vehicles; scooters (toys); radio-controlled toy vehicles; scale model kits (toys); toy models; controllers for toys are dissimilar to the all the opponent’s goods and services in Classes 6, 9, 11 and 42.

2. 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.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), 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

Frédérique SULPICE

Jorge ZARAGOZA GOMEZ

Anna BAKALARZ

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.