BrightSpark | Decision 2791328
Date Published: Sep 22, 2017
OPPOSITION No B 2 791 328
JFA Limited, Riverside, Mill Lane, Taplow, Maidenhead, Berks SL6 0AA, United Kingdom (opponent)
a g a i n s t
Brightspark Global Limited, 38 Dudley Gardens, London W13 9LT, United Kingdom (applicant), represented by Axis IP Services Limited, Peter House, Oxford Street, Manchester M1 5AN, United Kingdom (professional representative).
On 15/09/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 791 328 is partially upheld, namely for the following contested goods:
Class 11: Bicycle lights; bicycle lamps; bicycle dynamo lights.
2. European Union trade mark application No 15 723 927 is rejected for all the above goods. It may proceed for the remaining services in Class 42.
3. Each party bears its own costs.
REASONS:
The opponent filed an opposition against all the goods and services of European Union trade mark application No 15 723 927 . The opposition is based on European Union trade mark registration No 6 898 217 ‘BRIGHT SPARK’. The opponent invoked Articles 8(1)(b) and 8(5) 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.
- The goods and services
The goods on which the opposition is based are the following:
Class 4: Gas cartridges.
Class 7: Blow torches; blow torches and blow lamps for household use; electric blenders for household use.
Class 11: Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes; light bulbs; decorative lights; ropelights; umbrella lights; portable cookers; patio heaters; portable heaters; barbecues; portable gas barbecues; heated food warming plates; dish warmers; bunsen burners; toasters; electric cooking utensils.
Class 18: Umbrellas; parasols; bags.
Class 21: Household or kitchen utensils and containers; combs and sponges; brushes (except paint brushes); articles for cleaning purposes; steelwool; unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware not included in other classes; aerosol cans, not for medical use; non-electric cooking utensils.
The contested goods and services are the following:
Class 11: Bicycle lights; bicycle lamps; bicycle dynamo lights.
Class 42: Design of lighting systems; technical planning and technical project management for the development of lighting equipment.
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 bicycle lights; bicycle lamps; bicycle dynamo lights are included in the broad category of the opponent’s apparatus for lighting. Therefore, they are identical.
Contested services in Class 42
The contested design of lighting systems; technical planning and technical project management for the development of lighting equipment are services which require specific expertise in the area of design and development of new products, namely lighting systems and lighting equipment, for their provision to others. Although, the end result of these services could be the invention of some of the opponent’s goods such as apparatus for lighting; light bulbs; decorative lights; ropelights or umbrella lights in Class 11, this is not enough for a finding of similarity between them. The provision of the contested services requires not only specialised knowledge, but also particular technology and laboratory conditions, which usually call for significant investment; these conditions differ from those for the manufacture of the opponent’s goods referred to above. The opponent’s apparatus for lighting; light bulbs; decorative lights; ropelights; umbrella lights in Class 11 and the contested services in Class 42 do not coincide in nature, given that goods are tangible whereas services are intangible, and they have different purposes, distribution channels and methods of use. They are neither in competition nor necessarily complementary in the sense that one is indispensable (essential) or important (significant) for the use of the other in such a way that consumers may think that responsibility for the production of those goods or provision of those services lies with the same undertaking. The providers of the contested services and manufacturers of the abovementioned opponent’s goods are not usually the same, and they do not usually have the same end users. Furthermore, normally the company who manufactures the aforesaid opponent’s goods is the end consumer of the contested services. In other words, it is unlikely that an undertaking involved in the manufacturing of lighting apparatus would provide design services and/or services related to the development of the same products to third parties under the same trade mark.
As regards the remaining opponent’s goods which include cartridges for gas in Class 4, blow torches, blow lamps, electric blenders (all for household use) in Class 7, apparatus for heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes in Class 11, umbrellas, parasols and bags in Class 18 and household or kitchen utensils and containers, combs, sponges, brushes (except paint brushes), articles for cleaning purposes, steelwool, unworked or semi-worked glass (except glass used in building), glassware, porcelain and earthenware in Class 21, the Opposition Division is of the opinion that they have even less in common with the contested services than the opponent’s goods already compared above since they concern different goods. Consequently, all of the abovementioned considerations are equally applicable when comparing the opponent’s remaining goods with the contested services.
In view of the foregoing the contested services in Class 42 are dissimilar to all of the opponent’s goods in Classes 4, 7, 11, 18 and 21.
- 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 professionals in the field of cycling.
The degree of attention may vary from average to high, considering the nature of the relevant goods (i.e. parts for bicycles, which may be selected and purchased with a higher degree of care and attention on account of security features or technical characteristics) and their price.
- The signs
BRIGHT SPARK | |
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.
All of the verbal elements of the signs are meaningful for the English-speaking part of the public in the relevant territory. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on this part of the public.
The earlier mark is a word mark composed of the verbal elements ‘BRIGHT’ and ‘SPARK’. In this regard, it should be noted that the protection offered by the registration of a word mark applies to the word stated in the application for registration and not to the individual graphic or stylistic characteristics which that mark might possess (22/05/2008, T-254/06, RadioCom, EU:T:2008:165, § 43). Therefore, it is irrelevant whether a word mark is depicted in lower or upper case letters, or in a combination thereof.
When it comes to the earlier mark’s verbal elements, the English-speaking part of the public will understand the word ‘BRIGHT’ as ‘giving out or reflecting much light; shining’ (information extracted from Oxford Dictionaries online at https://en.oxforddictionaries.com/definition/bright) and the word ‘SPARK’ as ‘a small fiery particle thrown off from a fire, alight in ashes, or produced by striking together two hard surfaces such as stone or metal; a small flash of light produced by a sudden disruptive electrical discharge through the air’ (information extracted from Oxford Dictionaries online at https://en.oxforddictionaries.com/definition/spark). Considering the abovementioned meaning of the word ‘BRIGHT’, this element is weak for the relevant goods in Class 11, as it only indicates that they will give out/reflect much light or they (or their surface) will shine. The distinctiveness of the word ‘SPARK’ is average given that its meaning has no link to the relevant goods and their characteristics. Furthermore, the expression ‘BRIGHT SPARK’ will be understood as ‘a clever or witty person’ (information extracted from Oxford Dictionaries online at https://en.oxforddictionaries.com/definition/bright_spark). Given that the meaning of this expression has no connection to any of the characteristics of the relevant goods, it is distinctive to an average degree.
The contested sign is a figurative mark consisting of the verbal element ‘BrightSpark’ depicted in a slightly stylised typeface in yellow. To the left of this element, there is a figurative element in yellow which may resemble overlapping stylised letters ‘S’ and ‘B’ (referring to the capital letters present in the verbal element), at least for a part of the public; all the abovementioned elements are placed inside of a black rectangle.
The Court has held that, although average consumers normally perceive a mark as a whole and do not proceed to analyse its various details, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57).
With respect to the present case, even if the verbal element ‘BrightSpark’ of the contested sign does not exist as such in English, it is reasonable to assume that English-speaking consumers in the relevant territory will break up the element into two separate words, ‘Bright’ and ‘Spark’, both of which have a clear and specific meaning for them, as explained in detail above, and thus they will perceive it as a combination of these words. This is even reinforced by the fact that the word ‘Spark’ starts with an upper case letter, which visually help to split the expression ‘BrightSpark’ into the above words. Consequently, what has been stated above regarding the meanings and distinctiveness of the earlier mark’s verbal elements and the meaning and distinctiveness of their combination, is fully applicable to the same elements of the contested sign.
The black rectangle of the contested sign is a basic geometrical shape which performs only a decorative function within the sign and is, therefore, a non-distinctive element of the sign. The other figurative element of the contested sign, which can be perceived as two overlapping letters ‘S’ and ‘B’ by some consumers, is distinctive to an average degree in the context of the relevant goods. However, it is established practice that when signs consist of both verbal and figurative components (as the contested sign does), 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). Therefore, this figurative element of the contested sign has less impact on the consumer’s perception than its verbal elements.
In terms of dominance, neither of the signs has any element that could be considered clearly more dominant (visually eye-catching) than other elements.
Visually, the signs coincide in all of their verbal elements, ‘BRIGHT SPARK’/‘BrightSpark’, notwithstanding the different typefaces and colours of the letters.
On the other hand, the signs differ in the additional figurative elements of the contested sign, as described above, which are either non-distinctive (the black rectangle) or have less impact (the figurative element on the left hand side of the contested sign) than the coinciding verbal elements.
The signs also differ in the slight stylisation in which the verbal elements of the contested sign are written, namely the typeface and colour of the letters. However, this stylisation is purely decorative and is not considered particularly overwhelming, so it will not distract the consumer’s attention from the word it embellishes.
Considering all the above, the signs are visually similar to a high degree.
Aurally, the pronunciation of the signs coincides in the sound of their verbal elements, ‘BRIGHT SPARK’/‘BrightSpark’.
The Opposition Division is of the opinion that the relevant public will naturally refer to the contested sign only by the word ‘BrightSpark’, even if it sees some letters in the figurative element of the sign as explained above.
Therefore, the signs are aurally identical.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived with the same meaning mentioned above (i.e ‘a clever or witty person’), they are conceptually identical.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- 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 relevant goods from the perspective of the English-speaking part 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.
- Global assessment, other arguments and conclusion
The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).
The present assessment of likelihood of confusion considers the perception of the English-speaking part of the public in the relevant territory. The relevant public consists of the public at large and professionals in the field of cycling.
As concluded above, the contested goods and services are partly identical and partly dissimilar to the opponent’s goods; the degree of attention varies from average to high and the earlier mark has an average degree of inherent distinctiveness.
The conflicting signs are visually similar to a high degree and aurally and conceptually identical, as explained in detail above in section c) of this decision. This is, in particular, justified by the fact that the earlier mark is included in its entirety in the contested sign where it plays an independent and distinctive role.
The Opposition Division is of the opinion that the differences between the signs, as indicated above, are not sufficient to counteract their similarities, and also for the following reasons.
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. Furthermore, it is common practice in the relevant market for manufacturers/providers to make variations of their trade marks, for example by altering the typeface or colours, or adding verbal or figurative elements to them, in order to denote a new product and/or service line or to endow a trade mark with a new, fashionable image.
In the present case, although the relevant public might detect certain differences between the conflicting signs, the likelihood that it might associate the signs with each other is very real. It is highly likely that the relevant consumer will perceive the contested sign as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49). It is therefore conceivable that the relevant public, even part of it with a high degree of attention, will regard the goods designated by the conflicting signs as belonging to two ranges of goods coming from the same undertaking.
Based on an overall assessment, the Opposition Division concludes that there is a likelihood of confusion (including a likelihood of association) on the part of the English-speaking part of the public in the relevant territory and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 6 898 217. 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 sign must be rejected for the goods found to be identical to those of the earlier trade mark.
The contested services in Class 42 are dissimilar to all of the opponent’s goods in Classes 4, 7, 11, 18 and 21. 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 services cannot be successful.
REPUTATION – ARTICLE 8(5) EUTMR
Article 8(5) EUTMR was raised in connection with European Union trade mark registration No 6 898 217 ‘BRIGHT SPARK’, for which the opponent claimed repute in the European Union.
According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.
According to Article 76(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office will be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.
It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.
According to Rule 19(1) EUTMIR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.
According to Rule 19(2)(c) EUTMIR, when the opposition is based on a mark with reputation within the meaning of Article 8(5) EUTMR, the opposing party must provide evidence showing, inter alia, that the mark has a reputation, as well as evidence or arguments showing that use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.
In the present case the notice of opposition was not accompanied by any evidence of the alleged reputation of the earlier trade mark.
On 21/11/2016 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit expired on 26/03/2017.
The opponent did not submit any evidence concerning the reputation of the trade mark on which the opposition is based.
Given that one of the necessary requirements of Article 8(5) EUTMR is not met, the opposition must be rejected as unfounded insofar as this ground is concerned.
COSTS
According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) 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 only for part of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.
The Opposition Division
Vít MAHELKA | Martin MITURA | Ric WASLEY |
According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.