LEDKON | Decision 2629817
Date Published: Sep 28, 2017
OPPOSITION No B 2 629 817
Slawomir Trzesniowski LEDsON, Obroncow Tobruku str. 31/140, 01494, Warsaw, Poland (opponent), represented by Uexküll & Stolberg Partnerschaft Von Patent - Und Rechtsanwälten MBB, Beselerstr. 4, 22607, Hamburg, Germany, (professional representative)
a g a i n s t
PS Markenrechtehandel-Verwaltungs-und Beteiligungsgesellschaft mbH & Co KG, Raiffeisenstraße 14, 61267 Neu-Anspach, Germany, (applicant), represented by Katscher Habermann Patentanwälte, Dolivostr. 15A, 64293, Darmstadt, Germany (professional representative).
On 25/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 629 817 is upheld for all the contested goods and services.
2. European Union trade mark application No 14 345 649 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 650.
REASONS:
The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 345 649. The opposition is based, inter alia, on the earlier European Union trade mark registration No 13 464 797. 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 European Union trade mark registration No 13 464 797.
- The goods and services
The goods on which the opposition is based are the following:
Class 6: Common metals and their alloys; Metal building materials; Metal profiles; Aluminium profiles; Transportable buildings of metal; Materials of metal for railway tracks; Non-electric cables and wires of common metal; Ironmongery, small items of metal hardware; Pipes and tubes of metal; Safes; Goods of common metal for mounting lighting apparatus; Ores.
Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; Apparatus for recording, transmission or reproduction of sound or images; Magnetic data carriers, recording discs; mechanisms for coin-operated apparatus; Cash registers, calculating machines, data processing equipment and computers; Fire-extinguishing apparatus.
Class 11: Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes; Light-emitting diodes [LED] lighting apparatus; all aforementioned goods with the exception of lights for motorised vehicles.
The contested goods and services are the following:
Class 9: Light-emitting diodes; Light diodes; Light-emitting diode controls; Electronic light-emitting diode controls; Light-emitting diode control circuits; Illuminated display boards; Signalling lights; Lights for traffic safety objects, including traffic lights; Marker illumination lights for roads; Lights for marking runways at airports; Lights for aircraft, namely lighting devices for illuminating runways and hence signalling installations; Light-emitting diodes for lamps, generally fitted with neon tubes or fluorescent tubes; Optical lenses.
Class 11: Lighting devices and light bars for lighting purposes; Light bars; LED light pipes; Housing and spacers for LED lamps; Lamps for background lighting; Light sources; Fitted bases for LED lamps; Parts and fittings for the above goods included in this class; Lighting apparatus; All the aforesaid goods being for use in the field of advertising and for advertising purposes, in particular in the field of illuminated advertising and illuminated advertisements; Lights for sports facilities.
Class 37: Installation of lighting systems.
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 light-emitting diodes; light diodes; light emitting diodes for lamps, generally fitted with neon tubes or fluorescent tubes are included in the opponent’s broad category of apparatus and instruments for conducting electricity, since the most common function of a diode – defined as semiconductor - is to allow an electric current to pass in one direction while blocking the current in the opposite direction. Therefore, these goods are identical.
The contested optical lenses are included in the opponent’s broad category of optical apparatus and instruments. Therefore, they are identical.
The contested light-emitting diode controls; Electronic light-emitting diode controls;
Light-emitting diode control circuits are included in the opponent’s broad category of apparatus and instruments for controlling electricity. Therefore, they are identical.
The contested Illuminated display boards; Signalling lights; Lights for traffic safety objects, including traffic lights; Marker illumination lights for roads; Lights for marking runways at airports; Lights for aircraft, namely lighting devices for illuminating runways and hence signalling installations are included in the opponent’s broad category of signalling apparatus and instruments. Therefore, they are identical.
Contested goods in Class 11
The contested Lighting devices and light bars for lighting purposes; Light bars; LED light pipes; Housing and spacers for LED lamps; Lamps for background lighting; Light sources; Fitted bases for LED lamps; Lighting apparatus; All the aforesaid goods being for use in the field of advertising and for advertising purposes, in particular in the field of illuminated advertising and illuminated advertisements; Lights for sports facilities are included in the opponent’s broad category of apparatus for lighting. Therefore, they are identical.
With regard to the contested Parts and fittings for the above goods included in this class these are often produced and/or sold by the same undertaking that manufactures the end product and often target the same purchasing public. Therefore, they are considered to be similar to the opponent’s apparatus for lighting.
It is noted that there is a limitation at the end of the opponent’s Class 11 goods, namely ‘all aforementioned goods with the exception of lights for motorised vehicles’. This limitation does not alter the findings reached above.
Contested services in Class 37
By their nature goods and services are dissimilar since goods are tangible and services are intangible. However, a similarity may arise between goods and their installation when it is common in the relevant market sector for the manufacturer of the goods to also provide such services, for the relevant public to coincide, and for the installation of these goods to be provided independently of the purchase of the goods (not after sales services). In this instance it is common on the market that manufacturers of the opponent’s various goods for lighting are involved in the provision of installation services. Therefore, whilst they differ in nature they are complementary, have the same general purpose and share distribution channels. Therefore, the contested installation of lighting systems are considered to be similar to a below average degree to the opponent’s apparatus for lighting.
- 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 and services found to be identical or similar are directed at the public at large as well as business consumers. The degree of attention may vary from average to higher than average for services such as installation of lighting systems which due to their specialist nature are likely to be the subject of a more careful purchasing decision.
- The signs
LEDsON | |
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).
Although the relevant consumers normally perceive a mark as a whole and do not proceed to analyse its various details, the fact remains that, when perceiving a verbal sign, they will break it down into elements which, for them, suggest a concrete meaning or which resemble words known to them (judgment of 13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57).
The earlier mark is a word mark, ‘LEDsON’. It is a word that does not have an overall meaning. In view of the goods and services in question, ‘LED’ would be instantly recognised as being an acronym for ‘Light Emitting Diode’. Therefore, given the descriptive nature of ‘LED’, this element of the mark is not considered to be distinctive. As a consequence, the overall impression the earlier mark conveys and any distinctiveness it possesses stems from the trade mark as a whole. Whilst ‘LED’ cannot be disregarded it is not distinctive and does not denote trade origin.
The contested sign is a figurative mark which comprises of the word ‘LEDKON’ which is red in colour. The acronym ‘LED’ is a slightly thicker font (also in red) and has a swoosh type device running through the L. Accordingly, the overall impression of the contested sign resides in the mark as a whole with ‘LED’ performing a descriptive role.
Visually, the signs coincide in ‘LED*ON’ and the length of their word elements composed of six letters. The fourth letter of each mark differs, i.e. an ‘s’ in the earlier mark and a ‘K’ in the contested sign. Whilst the letter ‘s’ is in lower case this is irrelevant since lower and upper case letters is in word marks is immaterial. The signs also differ in that the contested sign also contains a device and the prefix ‘LED’ is in thicker font than the remaining letters. Since the device and font are not considered to be dominant or particularly distinctive, this only renders the visual similarities to being average, taking also into account the lack of distinctiveness of the element ‘LED’.
Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the contested mark will be pronounced as two syllables, ‘LED-KON’. The earlier sign would also be pronounced as two syllables, namely, ‘LED-SON’. Therefore, they coincide with the ‘LED’ element and the ‘ON’ sound at the end of the respective marks. Moreover, due to the identical number of syllables and the same beginning and end of the signs, they have the same rhythm and intonation. However, since the ‘K’ and ‘S’ marks are the first letters of the second syllables and the element ‘LED’ is non-distinctive, they reduce the aural degree of similarity to be average.
Conceptually, the signs coincide in the non-distinctive element ‘LED’, the meaning of which has been described above. The remaining parts of the marks have no meaning. Therefore, from a conceptual perspective, other than the descriptive acronym ‘LED’, the marks have no meaning so the marks are conceptually neutral.
Since the signs have been found to be 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, or file evidence in support, 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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier must be seen as normal for all of the goods and services in question.
- Global assessment, other arguments 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). This is referred to as the interdependency principle.
In addition, 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).
In terms of recognition and recall, the identity between the first and the final parts of the verbal elements is more important, as differences in the middle of verbal elements may be ignored or not noticed and readily recalled by the relevant consumer.
The key factor in this assessment is that even though the ‘LED’ element placed at the beginning of both signs does not perform a distinctive role in the respective marks the marks have been found to be visually and aurally similar to an average degree due to their identical length and only one different letter placed in the middle. Therefore, the relevant public will rely upon the overall impressions the competing trade marks convey, not ignoring the element ‘LED’, despite it has little bearing in the assessment. Applying the interdependency principle, where the goods have been found to be identical there is a likelihood of confusion. The Opposition Division also finds that there is a likelihood of confusion in respect of the remaining goods which were found to be similar.
With regard to the services, whilst these were found to be similar to a below average degree there is still a likelihood of confusion. The average degree of aural and visual similarity, the imperfect recollection that the general public (who make up part of the relevant public) will rely upon and the normal inherent distinctiveness of the earlier mark results in there being a likelihood of confusion.
Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 13 464 797. It follows that the contested trade mark must be rejected for all the contested goods and services.
As the above mentioned earlier right leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).
COSTS
According to Article 85(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 costs incurred by the applicant in the course of these proceedings.
According to Rule 94(3) and (6) and Rule 94(7)(d)(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
Zuzanna STOJKOWICZ | Mark KING | Ioana MOISESCU |
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.
The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.