CitiLight, Visibility in Motion | Decision 2811951
Date Published: Sep 24, 2017
OPPOSITION No B 2 811 951
Citizen Electronics Co. Ltd., 23-1, Kamikurechi 1-chome, Fujiyoshida-shi, Yamanashi 403-0001, Japan (opponent), represented by Elzaburu S.L.P., Miguel Angel, 21, 28010 Madrid, Spain (professional representative)
a g a i n s t
CitiLight A/S, Arresoevej 15, 8240 Risskov, Denmark (applicant).
On 14/08/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 811 951 is partially upheld, namely for the following contested goods:
Class 11: Bicycle lights (mentioned twice); bicycle reflectors; bicycle reflectors for attachment to spokes.
2. European Union trade mark application No 15 742 992 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 15 742 992, namely against all the goods and services in Classes 11, 35 and 42. The opposition is based on, inter alia, international trade mark registration No 957 894 designating the European Union. 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.
The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s international trade mark registration No 957 894 designating the European Union.
- The goods and services
The goods on which the opposition is based are the following:
Class 9: Power distribution or control devices, machines, and apparatus; batteries and cells; electric or magnetic detectors; electric or magnetic meters and testers; electric wires and cables; electric buzzers; telecommunication devices and apparatus; electronic devices, machines, and apparatus; electronic circuit boards, integrated circuits, chips for light-emitting elements, light-emitting diodes, chips with a plurality of light-emitting diodes, and other parts of electronic devices, machines, and apparatus; magnetic cores; resistance wires; electrodes.
Class 11: Light-emitting diode lamps, and other electric lamps and lighting apparatus.
The contested goods and services are the following:
Class 11: Bicycle lights (mentioned twice); bicycle reflectors; bicycle reflectors for attachment to spokes.
Class 35: Import-export agencies for cycling helmets and cycle lights.
Class 42: Design and development of cycle lights and cycling helmets.
As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.
Contested goods in Class 11
The contested bicycle lights (mentioned twice); bicycle reflectors; bicycle reflectors for attachment to spokes are included in the broad category of the opponent’s lighting apparatus in Class 11. Therefore, they are identical.
Contested services in Class 35
The contested services in Class 35 are considered dissimilar to the earlier mark´s goods in Classes 9 and 11. Apart from being different in nature, since services are intangible, whereas goods are tangible, they serve different needs. Firstly, it should be pointed out that the contested import-export agencies for cycling helmets and cycle lights relate to the movement of goods and normally require involvement of customs authorities in both the country of import and the country of export. These services are often subject to import quotas, tariffs and trade agreements. As they are classified in Class 35, they are considered to relate to business administration. Contrary to the opponent’s allegations these services do not relate to the actual retail or wholesale of the goods concerned; they would be preparatory or ancillary to the commercialisation of such goods. Thus, irrespective of whether or not there is a degree of similarity between the goods (cycling helmets and cycle lights) being the subject of said services, this alone would not be conclusive for a finding of similarity between the goods and services. In light of the above, the goods and services at stake are far removed from each other, since their production and provision require different specific areas of expertise. Consequently, consumers will not think that the responsibility for the production of these goods or provision of these services lies with the same undertaking. Moreover, the goods and services in question are not in competition, nor are they complementary.
Contested services in Class 42
The contested design and development of cycle lights are considered dissimilar to the earlier mark´s goods in Classes 9 and 11. Although the applicant’s services concern cycle lights which are protected by the broader category of the opponent’s lighting apparatus, these goods and services have a different nature and purpose and they are normally provided/ manufactured, respectively, by different kinds of companies. Furthermore, they target different consumers and they are not in competition or 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 the responsibility for the production of those goods or provision of those services lies with the same undertaking. The same holds true insofar as the contested design and development of cycling helmets is concerned.
- 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 also at customers with specific professional knowledge or expertise in the cycling field.
Since these goods are not everyday purchases and usually involve considerable consideration before purchase due to their connection with safety, the level of attention of the relevant public is considered to be above average.
- The signs
Earlier trade mark | Contested sign |
The relevant territory is 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. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public.
Although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a 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).
Therefore, the English-speaking part of the relevant public is likely to split the earlier mark into the following recognisable terms, ‘CITI’ and ‘LED’, and regarding the contested sign, into ‘City’ and ‘Light’ accordingly. This is even more striking owing to the fact that, even though verbal elements of the contested sign are joined together, not only the first letters of the corresponding words are uppercase letters, but they are also written in two colours, green and blue, respectively.
As regards the common element ‘CITI’, it will be perceived as a contrived spelling of the English word ‘city’, i.e. ‘any large town or populous place’ (see Collins English Dictionary online), which is distinctive in relation to the goods concerned.
The element ‘LED’ of the earlier mark will be understood by a part of the relevant public at stake as light-emitting diode (see Collins English Dictionary online), whereas the term ‘Light’ of the contested sign as ‘the brightness that lets you see things’ (see Collins English Dictionary online). These terms are descriptive in relation to the goods concerned and so their impact is rather limited.
Regarding the figurative device of the contested sign, it should be mentioned that the representation of a person on a bicycle reinforces the concept of the purpose of the goods, and therefore, it will also be considered weak in relation to the goods at stake.
The sequence ‘Visibility in motion’ placed underneath the verbal element ‘CitiLight’ of the contested sign will be understood by the relevant part of the public as a reference to being visible while moving (e.g. riding a bicycle). Thus, this sequence most likely will be considered descriptive at least in relation to part of the goods at stake. Notwithstanding the foregoing, said sequence, is secondary due to its much smaller size and the lower position in the contested sign. Thus, the element ‘CitiLight’ is the dominant element as it stands out visually.
Visually, the signs coincide in the sequence of letters ‘C-I-T-I-L’, which incorporates the distinctive element ‘CITI’ of the marks under comparison. Furthermore, these letters form also the first letters of the marks and this is especially important, since the consumer reads from left to right or from top to bottom and will perceive this word first. On the other hand, the signs differ in their last letters, namely ‘-ED’ vs ‘-ight’, respectively, the figurative device and the expression ‘Visibility in motion’ of the contested sign, although these elements are considered secondary for the reasons set forth above.
Regarding the figurative element of the contested sign, at this point it should be stressed that 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). This is even more applicable in the case at hand, since the figurative element has a limited impact.
Therefore, the signs are visually similar to an average degree.
Aurally, the pronunciation of the signs coincides in the sound of the letters /C-I-T-I-L-/, present identically in both signs, whereas the marks differ in the sound of the last letters ‘-E-D’ vs ‘-i-g-h-t’, respectively. However, it should be pointed out that the last letter ‘D’ of the earlier mark and the last letter ‘t’ of the contested sign are also very similar in their pronunciation. The other words in the contested sign are less likely to be pronounced since they are much smaller and consumers will naturally refer to the sign by the word which stands out visually, ‘CitiLight’. The device element will not be pronounced. The marks are, aurally, similar to an average degree.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived as ‘CITI’, namely the reference to the English word ‘city,’ the signs are conceptually similar to a high degree. ‘LED’ and ‘Light’ convey similar ideas and although they are descriptive of the goods at issue, they contribute to the overall high degree of conceptual similarity of the marks.
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 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 an at least weak element in the mark as stated above in section c) of this decision.
- Global assessment, other arguments and conclusion
As has been concluded, the goods at stake are identical, whereas the services are dissimilar. The earlier mark has a normal degree of distinctiveness. The relevant public is the public at large whose level of attention is above average.
The signs are visually and aurally similar to an average degree, whereas conceptually the signs are highly similar.
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). Having said that, it is stressed that 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).
Therefore, the Opposition Division considers that the signs are sufficiently similar to lead to a likelihood of confusion, even taking into account an above average attention of the relevant public, including professionals. Consequently, there is a likelihood of confusion with respect to the identical goods.
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 relevant public and, therefore, the opposition is partly well-founded on the basis of the opponent’s international trade mark registration No 957 894 designating the European Union. 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 all the contested goods in Class 11 that were found to be identical to the earlier trade mark’s goods.
The contested services 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 services cannot be successful.
The opponent has also based its opposition on international trade mark registration No 821 507 for the figurative mark ‘CITILIGHT’ designating France and international trade mark registration No 1 006 037 for the figurative mark ‘CITILED’ designating the European Union.
The earlier international trade mark registration No 821 507 designating France invoked by the opponent covers narrower scope of the goods than the one compared. Therefore, the outcome cannot be different with respect to services for which the opposition has already been rejected; no likelihood of confusion exists with respect to those services.
The earlier international trade mark registration No 1 006 037 designating the European Union invoked by the opponent covers goods such as projectors; flashlights for use in still and movie photography; cameras (photography); measuring or testing machines and instruments; electric switches; automatic electric time switches; electric or magnetic meters and testers; mobile phones; telephone sets; facsimile machines; television receivers; television transmitters; radio receivers; radio transmitters; digital cameras; video cameras (camcorders); audio speakers; microphones (for telecommunication apparatus); portable digital audio players and recorders; vibrators used in mobile phones; telecommunication devices and apparatus; light-emitting diodes; semi conductor elements; back lights for liquid crystal display apparatus; keypads and their parts; computers; electronic desk calculators; pocket calculators; word processors; portable electric dictionaries; liquid crystal displays; electro luminescent (EL) displays; plasma displays; electronic machines, apparatus and their parts; consumer games adapted for use with an external display screen or monitor in Class 9 and air conditioning apparatus (for industrial purposes); cooking equipment for industrial purposes; industrial dish dryers and installations; dish disinfectant apparatus for industrial purposes; light-emitting diode lamps; electric lamps; lighting apparatus using light-emitting diodes; lighting apparatus; household electrothermic appliances; cooking heaters (for household purposes); kitchen worktops; kitchen sinks; bathtubs; showers; toilet stool units with a washing water squirter; disinfectant dispensers for toiletswhich in Class 11. These goods are clearly different from the services in Classes 35 and 42 of the contested sign, for the same reasons as the goods already compared above. Therefore, the outcome cannot be different with respect to services for which the opposition has already been rejected; no likelihood of confusion exists with respect to those services.
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
Chantal VAN RIEL | Klaudia MISZTAL | Lucinda CARNEY |
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.