OPPOSITION Nо B 3 110 206

L.M.H. Leasing and Management Holding Limited, Lampousas Street 1, 1095 Nicosie, Cyprus (opponent), represented by Alexandra Le Corroncq, 1 rue de Stockholm, 75008 Paris, France (professional representative)

a g a i n s t

1a-Ledshop E.U., Ringstraße 1, 4600 Wels, Austria (applicant).

On 11/12/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 110 206 is partially upheld, namely for the following contested goods:

Class 9: Optical devices, enhancers and correctors; apparatus, instruments and cables for electricity; measuring, detecting and monitoring instruments, indicators and controllers; information technology and audio-visual, multimedia and photographic devices.

Class 11: Lighting and lighting reflectors.

2. European Union trade mark application No 18 087 202 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 of European Union trade mark application No 18 087 202 ‘LuxxaLed’ (word mark) namely against all the goods in Classes 9 and 11 and some of the goods in Class 20. The opposition is based on European Union trade mark registration No 10 974 277 (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.

a) The goods

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

Class 9: Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; electric diodes or electronic, electronic and electronic converters, electric transformers or electronic, electrical ballasts or electronic.

Class 11: Lighting apparatus.

The contested goods are the following:

Class 9: Safety, security, protection and signalling devices; optical devices, enhancers and correctors; apparatus, instruments and cables for electricity; measuring, detecting and monitoring instruments, indicators and controllers; information technology and audio-visual, multimedia and photographic devices.

Class 11: Lighting and lighting reflectors.

Class 20: Displays, stands and signage, non-metallic.

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.

The opponent refers to previous decisions of the Office to support its arguments as regards the comparison of the goods. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

While the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision.

In view of the above, it follows that, even if the previous decisions submitted to the Opposition Division are to some extent factually similar to the present case, the outcome may not be the same.

Contested goods in Class 9

The contested apparatus, instruments and cables for electricity include, as a broader category, or overlap with, the opponent’s apparatus and instruments for conducting electricity. 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 optical devices, enhancers and correctors; information technology and audio-visual, multimedia and photographic devices are similar to the opponent’s apparatus and instruments for accumulating electricity as they usually coincide in producer, relevant public and distribution channels. Furthermore, they are complementary.

The contested measuring, detecting and monitoring instruments, indicators and controllers are similar to a low degree to the opponent’s apparatus and instruments for controlling electricity as they usually coincide in producer, relevant public and distribution channels.

Contrary to the opponent’s arguments, the contested safety, security, protection and signalling devices do not share the same nature, intended purpose or method of use with the opponent’s goods in Classes 9 and 11. They are neither complementary nor in competition; they do not share distribution channels, relevant public or usual origin. Therefore, they are dissimilar.

Contested goods in Class 11

The contested lighting includes, as a broader category, or overlaps with, the opponent’s lighting apparatus. 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 lighting reflectors are included in the broad category of the opponent’s lighting apparatus. Therefore, they are identical.

Contested goods in Class 20

The contested displays, stands and signage, non-metallic are dissimilar to all the goods for which the earlier mark is registered in Classes 9 and 11, since they have nothing in common that could justify finding a level of similarity between them. The fact that the contested goods may include lights among their components or coincide in distribution channels, as argued by the opponent, is insufficient for finding similarity as they clearly differ in nature, purpose and method of use. Furthermore, they do not coincide in usual producers and are neither complementary nor in competition.

b) 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 to varying degrees 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 higher than average, depending on the specialised nature of the goods, the frequency of purchase and their price.

c) The signs

	LuxxaLed
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). 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 mark’s element ‘LIGHTING’ is meaningful in English. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public.

The element ‘LIGHTING’ of the earlier mark will be associated with ‘equipment in a room, building, or street for producing light’ (information extracted from Oxford English Dictionary on 03/12/2020 at https://www.lexico.com/definition/lighting). Bearing in mind that the relevant goods are apparatus and instruments for conducting, accumulating or controlling electricity in Class 9 and lighting apparatus in Class 11, this element is weak for the goods in Class 9 and non-distinctive for the goods in Class 11, as it refers to an electric effect of the goods in Class 9 or to the kind of goods in Class 11.

The earlier mark’s figurative element may be perceived as an arc or a crescent moon. Since it has no direct relation to the relevant goods, it is distinctive.

As regards the contested sign, although it is composed of one verbal element, the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58). In this case, the relevant public will split the verbal element ‘LuxxaLed’ into two parts and perceive the elements ‘Luxxa’ and ‘Led’. This is even more likely since these elements’ initial letters are in upper case. The element ‘Luxxa’ has no meaning as such for the relevant public and is, therefore, distinctive. The element ‘Led’ is the abbreviation for light-emitting diode which is ‘a diode of semiconductor material, such as gallium arsenide, that emits light when a forward bias is applied, the colour depending on the semiconductor material: used as off/on indicators’ (information extracted from Collins English Dictionary on 03/12/2020 at https://www.collinsdictionary.com/dictionary/english/led). Therefore, it is a non-distinctive element for the contested goods in Class 11 and a weak element for the remaining relevant goods, since it refers to the type of goods or indicates that the relevant goods use this type of device for functioning respectively.

Although the elements ‘LUXNA’ in the earlier mark and ‘LUXXA’ in the contested sign might allude to the word ‘lux’, the SI unit of illuminance, as a whole they are meaningless and are, therefore, distinctive.

The element ‘LUXNA’ and the figurative element in the earlier mark are the dominant elements as they are the most eye-catching.

When signs 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).

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.

Visually, the signs coincide in the sequence of letters ‘LUX*A’. However, they differ in the letter ‘N’ in the fourth position and in the weak or non-distinctive verbal element ‘LIGHTING’ of the earlier mark, as well as, in the double letter ‘X’ and weak element ‘Led’ of the contested sign. The marks also differ in the figurative element and slightly stylised typeface of the earlier mark.

The stylisation of the verbal elements in the earlier mark will be merely perceived as a graphical means of bringing the verbal elements to the attention of the public and, therefore, its impact on the comparison of the signs will also be limited.

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

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛LUX*A’, present identically in both signs. The pronunciation differs in the sound of the letter ‛N’ and of the verbal element ‘LIGHTING’ of the earlier mark and in the sound of the last letters ‘Led’ of the contested sign, since the double letter ‘XX’ of the contested sign will be pronounced as a single letter ‘X’.

However, the element ‘LIGHTING’, due to its reduced size and weak or non-distinctive character, is not likely to be pronounced (03/07/2013, T‑206/12, LIBERTE american blend, EU:T:2013:342). Moreover, it has been confirmed by case-law that consumers generally only refer to the dominant elements in trade marks (03/07/2013, T‑206/12, LIBERTE american blend, EU:T:2013:342, § 43-44) and they tend to shorten marks containing several words.

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

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The signs will be associated with a similar meaning, due to the concept of ‘lighting’ in the earlier mark and ‘Led’ in the contested sign. However, as both elements are at most weak, the signs are conceptually similar to a low degree.

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

d) 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 or non-distinctive element in the mark, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

A likelihood of confusion (including a likelihood of association) 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.

The contested goods are partly identical, partly similar to varying degrees and partly dissimilar to the opponent’s goods. The relevant public is the public at large and professionals. The degree of attention may vary from average to higher than average. The earlier mark as a whole has a normal degree of distinctiveness.

The marks are visually similar to an average degree, aurally similar to at least an average degree and conceptually similar to a low degree, since both signs coincide in most of the letters of their distinctive elements at the beginning of the signs and most of the differing elements are weak or non-distinctive.

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 differing letters between the distinctive elements ‘LUXNA’/’Luxxa’ may easily go unnoticed since they are in the middle of the signs.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration. 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 from the above that the contested trade mark must be rejected for the goods found to be identical or similar to those of the earlier trade mark.

The opposition is also successful insofar as the goods that are similar to a low degree, since the significant coincidences between the marks are enough to outweigh the low similarity of those goods.

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

Saida CRABBE

Victoria DAFAUCE MENÉNDEZ

Marzena MACIAK

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.