OPPOSITION No B 3 081 508

Legrand SNC (Société en nom Collectif) and LEGRAND FRANCE (Société Anonyme), 128, avenue du Maréchal de Lattre-de-Tassigny, 87000 Limoges, France (opponents), represented by Santarelli, 49, avenue des Champs Elysées, 75008 Paris, France (professional representative)

a g a i n s t

Latrand Ltd, 11 Mayak str, 4000 Plodiv, Bulgaria (applicant).

On 27/02/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 081 508 is upheld for all the contested goods.

2. European Union trade mark application No 18 007 923 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 18 007 923 for the word mark ‘Latrand’. The opposition is based on international trade mark registration No 1 243 306 designating the European Union for the word mark ‘LEGRAND’. 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 9: Apparatus and instruments, particularly modular apparatus and instruments, for the supply of low or medium voltage electricity, conducting, distribution, switching, transformation, accumulation, regulation or control of low or medium voltage electricity; electric apparatus for control, lighting, heating, air-conditioning, shutters, blinds and locks; instruments and devices for remote control, signaling, monitoring, remote monitoring, checking (supervision), access control, detection, alarm, intercommunication, the aforesaid instruments and devices being wired or operated by radio, telephone, infrared or carrier current; measuring apparatus for electrical circuits; cabinets, cases, consoles and panels, all for electrical equipment and circuits; meters, particularly for electrical energy; electric accumulators; current rectifiers; electrical ballasts and their monitors; splitters (electricity), transformers; inverters (electricity); terminal blocks; electronic housings; connection boxes; terminals (electricity); circuit breakers; disconnectors, switches, commutators, telerupters and circuit breakers; lightning conductors; fuses; detectors of rising temperature, levels of illumination, electric current, overvoltage of electric or atmospheric origin, malfunction or technical failure of electric, smoke, gas and flooding installations; timers for lighting and/or electrical installations; indicators; switches, relays, programmers and thermostats; load controllers; light dimmers; plugs, sockets; electric conductors, particularly wires, cables, rails and buses; installation and/or distribution profiles for electric conductors and/or electric equipment, including cable wireways, columns and troughs; modular couplers; rail connectors (electricity); interfaces for connecting microcomputers to electric networks; modular blocks (electricity) to be mounted onto distribution board rails; all the aforesaid goods being fitted parts for distribution boards and/or distribution boxes or cases; parts and components of all the aforesaid goods.

Class 11: Apparatus and installations for lighting; electric lamps; lamps for lighting; safety lamps; lamps for indicators; electric light bulbs; light bulbs; light diffusers; self-contained lighting units, including emergency lighting units; modular emergency lighting units; security lighting units and plates; parts and components of all the aforesaid goods.

The contested goods are the following:

Class 9: Adapter plugs; Plugs [electric]; Electric plugs; Electrical plugs.

Class 11: Battery powered fluorescent emergency lighting units; Battery powered incandescent emergency lighting units; Ceiling lights; Emergency lighting; Floodlights; Ventilating fans; Axial fans; Cooling fans; Ceiling fans; Extractor fans; Room fans.

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 9

The contested adapter plugs; plugs [electric]; electric plugs; electrical plugs are included in, or overlap with, the broad category of the opponent’s plugs, sockets; all the aforesaid goods being fitted parts for distribution boards and/or distribution boxes or cases. Therefore, they are identical.

Contested goods in Class 11

The contested battery powered fluorescent emergency lighting units; battery powered incandescent emergency lighting units; ceiling lights; emergency lighting; floodlights are included in the broad category of the opponent’s apparatus and installations for lighting. Therefore, they are identical.

The contested ventilating fans; axial fans; cooling fans; ceiling fans; extractor fans; room fans are similar to the opponent’s electric apparatus for air-conditioning. These goods have a similar nature and purpose. They also usually come from the same or economically linked undertakings.

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 or similar 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

LEGRAND	Latrand
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). This applies by analogy to international registrations designating the European Union. 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 sign is meaningful in certain territories, for example in those countries where French is spoken. The Opposition Division notes that a conceptual difference between the signs, such as that existing for a part of the public as referred to above, could help consumers to more easily distinguish between them. Therefore, the Opposition Division finds it appropriate to focus the comparison of the signs on the Polish-speaking part of the public where both signs are meaningless.

Visually and aurally, the signs coincide in ‘L**RAND’. However, they differ in their second and third letters ‘EG’ versus ‘AT’. Moreover, in case of word marks, the words as such are protected or seek protection; therefore, it is immaterial for the visual comparison whether they are depicted in upper or lower class letters, or in which particular typeface they are presented.

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

Conceptually, neither of the signs has a meaning for the analysed public in the relevant territory. 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.

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 claimed that the earlier trade mark enjoys enhanced distinctiveness but 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 analysed public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The goods are partly identical and partly similar. They target public at large and professionals. The degree of attention may vary from average to high.

The signs are visually and aurally similar to an average degree. The conceptual comparison is neutral for the public under analysis.

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).

Considering all the foregoing and, especially the fact that the goods have been found

to be identical and similar, the signs to be visually and aurally similar, sharing five letters and sounds placed in the beginning and at the end of the signs, and four of them in sequence the Opposition Division is of the opinion that the public could believe that the goods came from the same undertaking or from economically-linked undertakings. The fact that they differ in two letters or sounds - somewhat hidden in the middle of the contested sign - is not considered to be enough to counteract the similarities between the signs.

Considering all the above, there is a likelihood of confusion on the part of the Polish-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 well founded on the basis of the opponent’s international trade mark registration No 1 243 306 designating the European Union. It follows that the contested trade mark must be rejected for all the contested goods.

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 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

Anna ZIÓŁKOWSKA

Katarzyna ZANIECKA

Martin INGESSON

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.