OPPOSITION No B 3 082 848

Luna Elektrik Elektronik Sanayi Ve Ticaret Anonim Sirketi, A.O.S.B. 10001 SOK. No: 9 Çiğli, Izmir, Turkey (opponent), represented by Ionut Lupsa, Calea 13 Septembrie no. 90, 1.02, 050726 Bucharest, Romania (professional representative)

a g a i n s t

CBRE GmbH, Hausvogteiplatz 10, 0117 Berlin, Germany (applicant), represented by Görg Partnerschaft von Rechtsanwälten mbB, Upper West Kantstraße 164, 10623 Berlin, Germany (professional representative).

On 30/11/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 082 848 is upheld for all the contested goods, namely:

Class 9: Software; Computer software; Simulation software; Simulation software (education); Simulation software (entertainment); Computer software for providing of training in simulation; Simulation software for use in digital computers; Games software; Data management software; Market prediction software; Mobile software; Table representation software; Software and applications for mobile devices; Software for searching and retrieving information across a computer network; Big data management software; artificial intelligence software.

2. European Union trade mark application No 17 979 623 is rejected for all the contested goods. It may proceed for the remaining uncontested services.

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

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 17 979 623 ‘Luna’ (word mark), namely against all the goods in Class 9. The opposition is based on European Union trade mark registration No 15 095 896 (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, inter alia, the following:

Class 9: Computer software.

The contested goods are the following:

Class 9: Software; Computer software; Simulation software; Simulation software (education); Simulation software (entertainment); Computer software for providing of training in simulation; Simulation software for use in digital computers; Games software; Data management software; Market prediction software; Mobile software; Table representation software; Software and applications for mobile devices; Software for searching and retrieving information across a computer network; Big data management software; artificial intelligence software.

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

The contested software; computer software; simulation software; simulation software (education); simulation software (entertainment); computer software for providing of training in simulation; simulation software for use in digital computers; games software; data management software; market prediction software; table representation software; software for searching and retrieving information across a computer network; big data management software; artificial intelligence software are identical to the opponent’s computer software either because they are identically included in the opponent’s list of goods, or because they are included in, they include, or overlap with, the broad category of the opponent’s computer software.

The contested mobile software; software and applications for mobile devices are highly similar to the opponent’s computer software. The goods have the same nature and purpose. They are directed at the same relevant public and coincide in manufacturers. They are also 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 and highly similar 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 high, depending on the specialised nature of the goods, the frequency of purchase and their price.

c) The signs

	Luna
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.

When assessing the similarity of the signs, an analysis of whether the signs convey any meaning is carried out to determine whether the signs are conceptually similar, and if so, to what extent. It may be easier to establish that the public may be confused about origin when both signs convey an identical (or similar) concept that is distinctive in relation to the goods and services.

Accordingly, the Opposition Division will first examine the opposition in relation to the part of the public for which the verbal elements of the marks are meaningful, such as the Spanish-speaking part of the relevant public, who will understand the common word ‘LUNA’ as ‘moon’.

The element ‘LUNA’ of both marks is distinctive for the goods in question.

The signs have no elements that could be considered dominant (visually eye-catching).

Visually, the signs coincide in the word ‘LUNA’ which constitutes the contested mark in its entirety and is the only verbal element of the earlier sign. Since the contested mark is the word mark, and protection is sought for the word as such and not its written form, differences in the use of lower or upper case are immaterial in the present case. Contrary to the applicant’s opinion, the figurative representation of the verbal element in the earlier sign has rather a decorative nature and a limited impact on consumers. 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).

Therefore, the signs are visually highly similar.

Aurally, the signs are identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived as ‘moon’, 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.

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 under analysis. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) Global assessment, other arguments and conclusion

The contested goods are partly identical and partly highly similar to the opponent’s goods. The signs are visually highly similar, and aurally and conceptually identical, inasmuch as they have in common the word ‘LUNA’, which is distinctive for the relevant goods. The earlier mark has a normal degree of distinctiveness.

The verbal elements of the signs are identical. The differences between the signs are confined to the figurative representation of the verbal element in the earlier sign which will be perceived as having a decorative nature only and has a limited impact on consumers.

Considering all the above, there is a likelihood of confusion on the part of the Spanish-speaking part of the public. 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.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 15 095 896. It follows that the contested trade mark must be rejected for all the contested goods.

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, 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

Martin MITURA

Anna BAKALARZ

Katarzyna ZANIECKA

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.