OPPOSITION No B 3 031 872

Elfa International AB, Södra Tullgatan 3, 211 40 MALMÖ, Sweden (opponent), represented by Awa Sweden AB, Jakobsbergsgatan 36, 111 44 Stockholm, Sweden (professional representative)

a g a i n s t

SLL Service GmbH, Robert-Perthel-Straße 6, 50739 Köln, Germany (applicant), represented by Seitz Rechtsanwälte Steuerberater, Aachener Str. 621, 50933 Köln, Germany (professional representative).

On 12/04/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 031 872 is upheld for all the contested goods, namely those listed in section a) below.

2. European Union trade mark application No 17 263 211 is rejected for all the contested goods. It may proceed for the remaining goods and services.

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

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 17 263 211 ,namely against all the goods in Classes 6, 19 and 20. The opposition is based on, inter alia, European Union trade mark registration No 12 591 335 for the word mark ‘LUMI’. 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, inter alia, the following:

Class 6: Metal building materials.

Class 19: Building materials (non-metallic).

Class 20: Furniture; furniture fittings, not of metal.

The contested goods are the following:

Class 6: Building elements and building materials of metal for trade fair and exhibition stands, for shop fittings and for clean room walls, floors and ceilings, namely decorative panels, wall, floor and ceiling panels, supports, profiled connectors and turnbuckles, mouldings, doors and door frames; moveable partitions of metal for dividing rooms; folding walls of metal (prefabricated building materials of metal).

Class 19: Building elements and building materials, not of metal, for trade fair and exhibition stands, for shop fittings and for clean room walls, floors and ceilings, including decorative panels, wall, floor and ceiling panels, supports, profiled connectors, mouldings, doors and door frames; folding walls, not of metal (pre-fabricated building materials, not of metal).

Class 20: Furniture, including stand fittings, in particular for events, presentations and trade fairs; collapsible office furniture; shop shelvings; filing shelves; counters, countertops, showcases and shelves for trade fair and exhibition stands and for shop fittings; turnbuckles, not of metal, for trade fair and exhibition stands and for shop fittings; brochure display stands; folding and collapsible brochure stands, poster stands; folding and collapsible poster stands; portable and/or collapsible display walls, display stands and roll-up display boards, of metal or not of metal, for presentation and exhibition purposes; display systems consisting of presentation and display stands, of metal or not of metal, for mounting of surface-coated digital prints or posters of paper, cloth fabrics or plastic; pipes consisting of prefabricated and adapted sets, of metal or not of metal, for mounting of signs for presentation purposes.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The terms ‘including’ and ‘in particular’ used in the applicant’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

However, the term ‘namely’ used in the applicant’s list of goods to show the relationship of individual goods to a broader category is exclusive and restricts the scope of protection only to the goods specifically listed.

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.

All the contested goods in Class 6

All the contested goods in Class 6 are included in the broad category of the opponent’s metal building materials. Therefore, they are identical.

All the contested goods in Class 19

All the contested goods in Class 19 are included in the broad category of the opponent’s building materials (non-metallic). They are identical.

Contested goods in Class 20

The contested turnbuckles, not of metal, for trade fair and exhibition stands and for shop fittings; pipes consisting of prefabricated and adapted sets, of metal or not of metal, for mounting of signs for presentation purposes are included in the opponent’s broad category furniture fittings. Therefore, they are identical.

The rest of the contested goods are either included in the broad category of the opponent’s furniture or are identically covered by both lists (i.e. including synonyms). They are identical.

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 are directed at the public at large as well as professionals 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. For example, for doors and door frames and for display systems consisting of presentation and display stands, the attention of the consumer during the purchase will certainly be high, since these goods can be expensive.

c) The signs

LUMI
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 earlier mark ‘LUMI’ has a meaning in certain languages in the relevant territory; it means, for example, ‘snow’ in Estonian and Finnish, ‘lights’ in Italian and ‘worlds’ in Romanian. However, in other languages of the relevant territory, such as Dutch, French or German, ‘LUMI’ is a meaningless and invented word and enjoys a normal degree of distinctiveness. The contested sign ‘LUMIN VR’ will also be perceived as an invented word for that part of the public in the relevant territory and is of normal distinctiveness. Consequently, the Opposition Division finds it appropriate to focus the assessment of the similarity of the signs on the public for which both signs are meaningless words (of an average degree of distinctiveness), as this is considered the most favourable scenario for likelihood of confusion to arise.

The contested sign has no element that could be considered clearly more dominant (eye-catching) than other elements.

Visually, the signs coincide in the sequence of letters ‘L-U-M-I’ and they differ in the additional letter ‘N’ and the element ‘VR’ of the contested sign. They also differ in the typeface of the contested sign. However, the stylisation of the contested sign is rather basic and therefore of low impact.

The beginnings of signs (i.e. the left side, since reading takes place from left to right) have a higher impact because they catch the consumer’s attention first.

Considering that the earlier right is totally included in the beginning of the contested sign, whereas the differing elements appear at the end of the contested sign, the signs are visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‘L-U-M-I’, present identically in both signs. The pronunciation differs in the additional letter ‘N’ and the element ‘VR’, which have no counterparts in the earlier right.

Considering that the last letter of ‘LUMIN’ is a soft consonant and the verbal element ‘VR’ will be pronounced as two separate letters ‘V’ and ‘R’, the signs are aurally similar to an average degree.

Conceptually, neither of the signs has a meaning for the relevant 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.

d) Distinctiveness of the earlier mark

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation. Therefore, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark 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.

e) 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 (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

The goods are identical and target the public at large as well as professionals. The degree of attention varies from average to high.

The signs are visually and aurally similar to an average degree and the conceptual comparison is not possible.

The earlier right is completely included in the beginning of the contested sign which, as explained, is the part of the sign with higher impact on consumers.

Also, 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).

The significant coincidences between the marks, together with the identity between the goods, is clearly enough to counteract their dissimilarities, and to lead consumers to believe that the goods come from the same undertaking or economically linked undertakings.

Considering all the above, the Opposition Division finds that there is likelihood of confusion on the part of the public in the relevant territory and therefore the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 12 591 335.

It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier right ‘LUMI’ leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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 (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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

María del Carmen SUCH SÁNCHEZ

Sylvie ALBRECHT

Sofia SACRISTAN MARTINEZ

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.