OPPOSITION No B 2 936 725

Philips Lighting Holding B.V., High Tech Campus 45, 5656AE, Eindhoven, The Netherlands (opponent), represented by Philips Lighting Intellectual Property, High Tech Campus 45, 5656 AE, Eindhoven, The Netherlands (professional representative)

a g a i n s t

Shenzhen Zhengjiguangzhao Technology Co., Ltd., 3F, Building B, Laowei 2nd Industrial Zone, Longhua Street, Bao'an District, Shenzhen, People’s Republic of China (applicant), represented by José Izquierdo Faces, Iparraguirre, 42 - 3º izda, 48011 Bilbao (Vizcaya), Spain (professional representative).

On 16/07/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 936 725 is upheld for all the contested goods, namely

Class 11: Light bulbs; lamps; light-emitting diodes [LED] lighting apparatus; fluorescent tubes; lighting apparatus and installations; lanterns for lighting; aquarium lights; fairy lights for festive decoration; ceiling lights.

2. European Union trade mark application No 16 648 107 is rejected for all the contested goods. It may proceed for the remaining goods.

3. The applicant bears the costs, fixed at EUR 620.

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 16 648 107 (figurative mark: ), namely against some of the goods in Class 11. The opposition is based on, inter alia, Benelux trade mark registration No 994 289 (word mark: HUE). The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

For international registrations designating the European Union, the ‘date of filing’ or, where applicable, the ‘date of priority’ of the contested mark within the meaning of Article 47(2) EUTMR, that is to say for the purposes of establishing the five-year period of use obligation for the earlier mark, is considered to be the date of registration, the date of subsequent designation of the European Union or the date of priority of the contested international registration, as applicable. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The applicant requested that the opponent submit proof of use of the trade marks on which the opposition is based, namely International trade mark registrations No 1 137 042 and No 1 328 134 and Benelux trade mark registration No 994 289.

In the present case, the date of filing of the contested trade mark is 26/04/2017.

Earlier Benelux trade mark No 994 289 was registered on 01/07/2016. Therefore, the request for proof of use is inadmissible as regards this earlier right.

Consequently, for reasons of procedural economy, the Opposition Division will first examine the Opposition in relation to Benelux trade mark registration No 994 289 (word mark: HUE).

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

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

Class 9: Control apparatus, software programs and electronic lighting components for so called “Solid State” lighting or LED lighting, controlled by a switch that can send and receive digital data or by hand-held, wearable and mobile digital apparatus for sending and receiving of digital data.

Class 11: Apparatus for lighting, electric lamps, lighting fixtures and lighting installations controlled through a communications network by means of a switch that can send and receive digital data or by means of hand-held, wearable and mobile digital devices for sending and receiving digital data.

The contested goods are the following:

Class 11: Light bulbs; lamps; light-emitting diodes [LED] lighting apparatus; fluorescent tubes; lighting apparatus and installations; lanterns for lighting; aquarium lights; fairy lights for festive decoration; ceiling lights.

The contested lighting apparatus and installations include as broad categories the opponent’s apparatus for lighting and lighting installations controlled through a communications network by means of a switch that can send and receive digital data or by means of hand-held, wearable and mobile digital devices for sending and receiving digital data. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested lamps include as a broader category the opponent’s electric lamps controlled through a communications network by means of a switch that can send and receive digital data or by means of hand-held, wearable and mobile digital devices for sending and receiving digital data. 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 light bulbs; light-emitting diodes [LED] lighting apparatus; fluorescent tubes; lanterns for lighting; aquarium lights; fairy lights for festive decoration; ceiling lights are all lighting apparatus that may or may not be controlled through a communications network. Therefore, they overlap with the opponent’s apparatus for lighting and lighting installations controlled through a communications network by means of a switch that can send and receive digital data or by means of hand-held, wearable and mobile digital devices for sending and receiving digital data. Therefore, they are identical.

2. 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.

The degree of attention is considered to vary from average to above average. The controls, for example, that allow for remote control of lighting are quite novel and high-tech and may require a higher than average degree of attention on the part of the public.

3. The signs

HUE
Earlier trade mark	Contested sign

The relevant territory is Benelux.

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).

When signs, like the contested sign in this case, 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).

The unitary character of the Benelux trade mark means that an earlier Benelux trade mark has identical protection in the relevant territories. Earlier Benelux trade marks may therefore be relied upon to challenge any subsequent application for a trade mark that would prejudice their protection, even if this is only in relation to the perception of consumers in part of the Benelux (09/03/2005, T‑33/03, Hai, EU:T:2005:89, § 39; 03/03/2004, T‑355/02, ZIRH, EU:T:2004:62, § 36).

The common element ‘HUE’ is meaningful in certain territories, for example in those countries where English is understood. Given the fact that the level of English in the Netherlands and among Dutch speakers is considered to be high, the Opposition Division finds it appropriate to focus the comparison of the signs on the French and German-speaking part of the relevant public.

The earlier mark is the word mark, ‘HUE’ which has no meaning in French or German. Therefore, it is distinctive, despite the applicant’s claim to the contrary when only considering the meaning in English.

The contested sign is a figurative mark composed of the verbal elements ‘Magic Hue’ that appear in a fairly basic bold typeface. The figurative aspect of the mark is non-distinctive, contrary to the view of the applicant.

The above considerations regarding the verbal element ‘HUE’ apply also here.

‘Magic’ means ‘having or apparently having supernatural powers’ but it is also a word often used with a laudatory sense of being ‘wonderful; exciting’ or ‘very effective in producing results, especially desired ones’ (https://en.oxforddictionaries.com). The word ‘Magic’ will be understood by French and German speakers in the Benelux region given its close proximity to the word in German (magisch) and in French (magique). ‘Magic’ would be descriptive when applied to goods and services in the field of sorcery or related to ‘magic tricks’. However, it is not directly and immediately descriptive in relation to the goods in this case. It has, however, a certain laudatory connotation as it could be understood by an important part of the relevant public as praising an exceptional feature and/or the efficiency of the goods concerned (21/04/2015, R 1678/2014-2 – MAGICSEX / MAGIC et al. § 60). Given this positive, laudatory connotation, it is less distinctive in relation to the goods in question than ‘HUE’ which has no meaning. ‘Magic’ will be perceived as a qualifier of the word ‘HUE’, as an adjective describing ‘HUE’. No element is more dominant than another in the sign.

At this point the Opposition Division decides to focus on the part of the public that will perceive the word ‘Magic’ as a laudatory adjective and therefore less distinctive than ‘HUE’.

Visually, the signs coincide in the distinctive word ‘HUE’ which is the earlier mark in its entirety and the second verbal element of the contested sign. However, they differ in the less distinctive verbal element ‘Magic’ and in the non-distinctive typeface of the contested sign. Therefore, they are visually similar to an above average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the distinctive word ‛HUE’, present identically in both signs. The pronunciation differs in the sound of the less distinctive word ‛Magic’ of the contested sign, which has no counterpart in the earlier mark.

Therefore, the signs are aurally similar to an above average degree.

Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territory, the element ‘Magic’ in the contested sign will be associated with the laudatory meaning explained above. The earlier sign however has no meaning for the relevant consumer. Therefore, the signs are not conceptually similar.

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

4. 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 mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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.

5. Global assessment, other arguments and conclusion

According to the case law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, § 22 et seq.).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the marks may be offset by a lower degree of similarity between the goods, and vice versa (22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 20; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 24; 29/09/1998, C-39/97, ‘Canon’, EU:C:1998:442, § 17).

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).

In the present case the goods are identical. The signs are visually and aurally similar to an above average degree and not conceptually similar. The degree of attention of the relevant consumer varies from average to above average and the earlier mark has a normal degree of inherent distinctive character.

The earlier mark ‘HUE’, a distinctive word, is contained in its entirety in the contested sign, albeit in second place. The applicant points out that the beginning of the signs has more impact on the consumer. However in the present case the attention of the consumer will be drawn to the second and more distinctive verbal element of the contested sign ‘HUE’. This is also due to the fact that ‘Magic’ will be perceived as a qualifier of ‘HUE’ as explained above. The lack of conceptual similarity is due to this term that will be given less importance by the consumer.

Considering all the above, there is a likelihood of confusion on the part of the French and German speaking part of the public.

Considering all the above, there is a likelihood of confusion on the part of the public that perceive the word ‘Magic’ as a laudatory adjective relating to ‘HUE’ regardless of the level of attention. The same can be said even for those that may not perceive the laudatory connotation of ‘Magic’. This is particularly the case considering the identity of the goods at issue and the fact that the earlier mark is contained in its entirety in the contested sign.

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

The applicant claims that the contested sign is already being used on the market place and without bad faith and without any knowledge of the existence of the earlier mark and it filed various links to substantiate this claim.

The right to an EUTM begins on the date when the EUTM is filed and not before, and from that date on the EUTM has to be examined with regard to opposition proceedings.

Therefore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, events or facts that happened before the filing date of the EUTM are irrelevant because the rights of the opponent, insofar as they predate the EUTM, are earlier than the applicant’s EUTM.

In addition, it is pointed out that bad faith is outside the scope of opposition proceedings.

Therefore considering the above, the opposition is well founded on the basis of the opponent’s Benelux trade mark registration No 994 289 (word mark: HUE). 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 that the contested trade mark must be rejected for all the contested goods.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the earlier right Benelux trade mark registration No 994 289 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 rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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 (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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

Tobias KLEE

Lynn BURTCHAELL

María Clara IBÁÑEZ FIORILLO

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.