OPPOSITION No B 3 040 857

Au-Lite Lighting Inc., No. 200, Section 1, Fu Lin Road, 307, Chiung Lin Village Hsin Chu Hsien, Taiwan (opponent), represented by Lippert Stachow Patentanwälte Rechtsanwälte Partnerschaft MBB, Krenkelstr. 3, 01309, Dresden, Germany (professional representative)

a g a i n s t

Ningbo Kotler Marketing Management Co., Ltd, Rm 864, Bldg 2, Yonggangxiandaiminglou, No.188, Jinhua Rd, Gaoxin Dist, Ningbo, Zhejiang, China (applicant), represented by Arcade & Asociados, C/ Isabel Colbrand, 6 - 5ª planta, 28050, Madrid, Spain (professional representative).

On 14/12/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 040 857 is partially upheld, namely for the following contested goods:

Class 11: LED light bulbs; lighting apparatus.

2. European Union trade mark application No 17 386 616 is rejected for all the above goods. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 17 386 616 for the figurative mark , namely against all the goods in Class 11. The opposition is based on European Union trade mark registration No 4 213 732 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

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

Class 11: Incandescent lamps, high intensity discharge lamps, halogen lamps for vehicles; automotive lamp bulbs; lamps for the inner of the car; lamps for motorcycle; vehicle lamps; fog lamps for vehicles; head lights for vehicles; rear lights for vehicles; projecting lamps for vehicles; driving lamps, working lamps for vehicles included in class 11.

The contested goods are the following:

Class 11: LED light bulbs; electric kettles; refrigerated containers [electric]; electric fans for personal use; air purifying apparatus and machines; ionization apparatus for the treatment of air or water; heat regenerators; solar collectors for heating; water purifying apparatus; pocket warmers; lighting apparatus; bread toasters; roasting apparatus; coffee machines, electric; ice-cream making machines; refrigerators; cooling apparatus; heaters; foot warmers.

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 11

The contested LED light bulbs overlap with the opponent’s automotive lamp bulbs. Therefore, they are identical.

The contested lighting apparatus include, as a broader category, the opponent’s vehicle 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.

The contested electric kettles; refrigerated containers [electric]; electric fans for personal use; air purifying apparatus and machines; ionization apparatus for the treatment of air or water; heat regenerators; solar collectors for heating; water purifying apparatus; pocket warmers; bread toasters; roasting apparatus; coffee machines, electric; ice-cream making machines; refrigerators; cooling apparatus; heaters; foot warmers are dissimilar to the opponent’s goods. The earlier mark is protected for goods which consist in different types of lamps for electrical lighting, to be used in particular for vehicles. Consequently, the goods under comparison are different in their nature and purpose. Furthermore, they are neither in competition with nor complementary to each other. In addition, these goods are produced by different undertakings which offer them through different distribution channels. The fact alone that both the contested goods and the opponent’s goods can be powered by electricity does not justify a finding of similarity.

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 and at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.

3. 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 signs under comparison are both figurative marks composed of a single word, which is ‘XTEC’ depicted in black standard uppercase typeface in the earlier mark, and ‘XTECH’ depicted in black stylised letters in the contested sign. The signs have the element ‘XTEC’ in common. The element ‘TEC’ in the earlier mark and ‘TECH’ in the contested sign may be perceived by the relevant public as an abbreviation for ‘technical/technology’ and will as such refer to the technical nature of the relevant goods. Therefore, this element is considered weak for the relevant public in relation to the goods at issue. The element ‘X’, present identically at the beginning of both signs, has no meaning for the relevant public in relation to the goods in question and is, therefore, distinctive. Overall the coinciding element ‘XTEC’ has no particular meaning for the relevant goods and its distinctiveness is considered average.

Visually and aurally, the signs coincide in the element (and its sound) ‘XTEC*’. However, they differ in the contested sign’s last letter ‘H’. 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. Moreover, irrespective of the different pronunciation rules in different parts of the relevant territory, the abovementioned difference is immaterial. The signs also differ in their stylisation, which is not particularly striking and will be perceived as an ordinary means of bringing the verbal elements to the attention of the public.

Therefore, the signs are visually and aurally highly similar.

Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territory, the weak element ‘TEC’, included in both signs, will be associated with the meaning explained above. To that extent, the signs are conceptually identical. However, given that the conceptual identity relates to a weak element, its impact in the assessment of likelihood of confusion will be very limited.

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.

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. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a weak element in the mark, as stated above in section c) of this decision.

5. Global assessment and conclusion

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).

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.

In the present case, the goods are partly identical and partly dissimilar. They target the general public and professionals; the degree of attention may vary from average to high. The earlier mark’s distinctiveness is considered average.

The conflicting signs are visually and aurally highly similar, as they coincide in the distinctive element ‘XTEC’. Conceptually, the signs are identical, to the extent that they coincide in the element ‘TEC’, though given the weakness of this element the conceptual identity is not very relevant.

Taking all the above into account, it is highly conceivable that the relevant consumer, even when displaying a higher degree of attention, 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).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the relevant public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 4 213 732.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical to those of the earlier trade mark.

The rest of the contested goods 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 cannot be successful.

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

The Opposition Division

José Antonio GARRIDO OTAOLA

Valeria ANCHINI

Aldo BLASI

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.