OPPOSITION No B 2 513 763

Krinner Innovation GmbH, Passauer Str. 55, 94342 Straßkirchen, Germany (opponent), represented by Winter, Brandl, Fürniss, Hübner, Röss, Kaiser, Polte Partnerschaft Patent- und Rechtsanwaltskanzlei, Alois-Steinecker-Str. 22, 85354 Freising, Germany (professional representative)

a g a i n s t

IQ Group Holdings Berhad, 9, Fieldhead Way, Heckmondwike WF16 9DU, United Kingdom (holder), represented by Wilson Gunn, 5th Floor Blackfriars House, The Parsonage, Manchester M3 2JA, United Kingdom (professional representative).

On 16/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 513 763 is upheld for all the contested goods.

2.        International registration No 1 220 053 is entirely refused protection in respect of the European Union.

3.        The holder bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods of international registration designating the European Union No 1 220 053. The opposition is based on, inter alia, European Union trade mark registration No 5 236 435. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent shall furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition shall be rejected.

For international registrations designating the European Union, the ‘date of publication’ of the contested mark within the meaning of Article 42(2) EUTMR, that is to say for the purposes of establishing the five-year period of use obligation for the earlier mark, is considered to be six months after the first republication of the international registration, which corresponds to the beginning of the opposition period (Article 156 EUTMR in conjunction with Article 152 EUTMR, in the version in force at the time of filing of the opposition). The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The holder requested that the opponent submit proof of use of, inter alia, European Union trade mark registration No 5 236 435.

The request was submitted in due time and is admissible as the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

The relevant date (first republication of the contested international registration plus six months) is 24/04/2015. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 24/04/2010 to 23/04/2015 inclusive.

Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:

Class 11:        Lighting installations, namely electric lights for Christmas trees (chains of candle lights or decorative Christmas tree lights, candle lights without cables, decorative Christmas tree lights without cables), decorative, low-voltage Christmas tree lights.

Class 28:         Electric decorations for Christmas trees (chains and decorative Christmas tree lights without cables).

According to Rule 22(3) EUTMIR, the evidence of use shall consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.

On 17/11/2015, according to Rule 22(2) EUTMIR, the Office gave the opponent until 17/01/2016 to submit evidence of use of the earlier trade mark. On 15/01/2016, within the time limit, the opponent submitted evidence of use.

As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data.

The evidence to be taken into account is, in particular, the following:

• Items 7, 8 and 9: some internet archive extracts from the website www.amazon.de offering Krinner Lumix wireless Christmas tree candles (products No 74132 and No 74122, ivory edition) and showing packaging on which the mark  appears in the upper right-hand corner, together with an image of a Christmas tree and some decorative candle lights without cables. These extracts are in German, but the prices can be seen in euros. They are dated 29/05/2010, 14/06/2010 and 04/07/2010.
• Item 10: an internet extract from the website www.amazon.de offering the product ‘Lumix’ and showing packaging on which the mark  appears, together with an image of a decorative Christmas candle light without cables. It can be seen that other models are offered under the earlier mark, such as ‘Krinner Lumix Classic Erweiterungs-Set’, ‘Krinner Lumix Classic Mini Basis Set’ and ‘Krinner Lumix Classic Mini Erweiterungs-Set’, with different prices in euros. Although this document is in German, in the product information (‘produktinformatioinen’) some technical details are provided (i.e. measurements, weight, batteries and model) along with the date from which the product has been available on Amazon in Germany, 01/08/2010.

• Item 11: an internet extract from the website www.amazon.fr offering the product ‘Lumix’ and showing packaging on which the mark  appears, together with an image of a decorative Christmas candle light without cables. It can be seen that other models are offered under the earlier mark, such as ‘Krinner Lumix Classic Mini-Pack’, ‘Krinner Lumix Classic Pack’ and ‘Krinner Lumix Classic Mini Set’, with different prices in euros. Although this document is in French, in the product information some technical details are provided (i.e. measurements and weight) along with the date from which the product has been available on Amazon in France, 04/10/2011.

• Item 12: an internet extract from the website www.amazon.es offering the product ‘Lumix’ and showing packaging on which the mark  appears, together with an image of a decorative Christmas candle light without cables and with the price in euros. Although this document is in Spanish, in the product information some technical details are provided (i.e. measurements, model, material and weight) along with the date from which the product has been available on Amazon in Spain, 31/03/2012.

• Items 13, 14 and 15: some orders, delivery notes and invoices for products under the earlier mark, showing some codes and prices in euros. These documents are in German and issued to German companies. They are dated 2012, 2013 and 2014.

The extracts from the website www.amazon.de and the orders, delivery notes and invoices show that the place of use is Germany. This can be inferred from the language of the documents (German), the currency mentioned (euros) and some addresses in Germany. Therefore, the evidence relates to the relevant territory.

Contrary to the holder’s claim, most of the evidence is dated within the relevant period.

In the present case, the evidence referring to use outside the relevant period (i.e. Items 1-6 and Item 16) confirms use of the opponent’s mark within the relevant period. This is because this evidence refers to the use of the trade mark in advance of the relevant period (i.e. in 2006, 2008 and 2009 in Germany). In addition, it also refers to use very close in time to the beginning of the relevant period (i.e. the internet archive extract dated 02/04/2010, submitted as Item 6) and right after the end of the relevant period (i.e. the orders, delivery notes and invoices of sales dated 08/09/2015, 25/09/2015 and 30/11/2015, submitted as Item 16).

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency.

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

The documents filed, namely the orders, delivery notes and invoices, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use. They are dated 2012, 2013 and 2014 (i.e. three years of the relevant period).

Use of the mark need not be quantitatively significant for it to be deemed genuine. In addition, in the present case, the goods in question are very specific seasonal items, namely to be used on Christmas trees.

The evidence submitted by the opponent in order to prove genuine use of the earlier EUTM relates exclusively to Germany. The internet extracts from Amazon’s website in France and Spain (Items 11 and 12), although they form part of the valid evidence submitted, are not supported by any other documents (such as invoices, press articles, advertisements, etc.) that could allow the Opposition Division to also take these Member States into consideration in the present assessment. As stated above, the territorial scope of the use is only one of several factors to be assessed in the determination of whether the use is genuine or not.

Therefore, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of the use of the earlier mark.

The evidence shows that the earlier trade mark has been used as registered. The earlier word mark, ‘Lumix’, appears on the internet extracts and the orders, delivery notes and invoices submitted.

In the context of Rule 22(3) EUTMIR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered, or of a variation thereof according to Article 15(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

According to Article 15(1), second subparagraph, point (a) EUTMR, the following shall also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor. When examining the use of an earlier registration for the purposes of Article 42(2) and (3) EUTMR, Article 15 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.

As seen above, some of the documents also show packaging of the ‘Lumix’ products on which the figurative mark  appears. This figurative sign contains the earlier mark along with some figurative elements, namely the letter ‘I’ is depicted in white and has a flame-like device on top and behind it is a gold circle. The earlier mark is clearly recognisable in the figurative sign. The flame-like device depicted on top of the letter ‘I’ and the gold circle are descriptive, as they evoke the concept of light coming from a candle. Therefore, they do not alter the distinctive character of the earlier mark. For the sake of completeness, the Opposition Division points out that this figurative sign is the same as the other earlier mark that is the basis of the present opposition, which is also subject to the requirement of proof of use, but that, due to reasons of procedural economy, this does not need to be assessed.

In view of the above, the Opposition Division considers that the evidence does show use of the sign as registered within the meaning of Article 15(1), second subparagraph, point (a) EUTMR.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C-40/01, Minimax, EU:C:2003:145, and 12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68).

Taking into account the evidence in its entirety, although the evidence submitted by the opponent is not particularly exhaustive, it does reach the minimum level necessary to establish genuine use of the earlier trade mark during the relevant period in the relevant territory.

However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods covered by the earlier trade mark.

According to Article 42(2) EUTMR, if the earlier trade mark has been used in relation to part only of the goods or services for which it is registered it shall, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.

In the present case, the evidence shows genuine use of the trade mark for the following goods:

Class 11:         Electric lights for Christmas trees (decorative Christmas tree lights, candle lights without cables, decorative Christmas tree lights without cables).

Class 28:         Electric decorations for Christmas trees (decorative Christmas tree lights without cables).

Therefore, the Opposition Division will only consider the abovementioned goods in its further examination of the opposition.

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 5 236 435.

1. The goods

The goods on which the opposition is based are the following:

Class 11:         Electric lights for Christmas trees (decorative Christmas tree lights, candle lights without cables, decorative Christmas tree lights without cables).

Class 28:         Electric decorations for Christmas trees (decorative Christmas tree lights without cables).

The contested goods, after a limitation requested by the holder, are the following:

Class 11:         Lighting fixtures for commercial use; LED lamps; light-emitting diodes (LED) lighting apparatus; apparatus for lighting; electric lighting apparatus; bulbs for lighting; casings for lights; ceiling light fittings; ceiling lights; desk lights; electric lights; emergency lights; filters for lighting apparatus; gas lights; light bars; light reflectors; light shades; lighting panels; outdoor lightings; outdoor lighting fittings; spot lights; lighting tubes; security lightings; but not including Christmas tree lights or any of the aforesaid goods being for use with Christmas tree lights, and not including festival lights or any of the aforesaid goods for use with festival lights.

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.

The contested lighting fixtures for commercial use; LED lamps; light-emitting diodes (LED) lighting apparatus; apparatus for lighting; electric lighting apparatus; bulbs for lighting; casings for lights; ceiling light fittings; ceiling lights; desk lights; electric lights; emergency lights; filters for lighting apparatus; gas lights; light bars; light reflectors; light shades; lighting panels; outdoor lightings; outdoor lighting fittings; spot lights; lighting tubes; security lightings; but not including Christmas tree lights or any of the aforesaid goods being for use with Christmas tree lights, and not including festival lights or any of the aforesaid goods for use with festival lights are items of lighting apparatus and parts thereof. Despite the restriction of the contested goods requested by the holder, which expressly excluded festival lights or any goods related to Christmas tree lights, the fact remains that the abovementioned contested goods and the opponent’s goods serve the same general purpose, namely to provide light. They may have the same origins and end users. In addition, they can be found beside each other on the shelves of the electrical section of a department store and they can have the same distribution channels. Furthermore, in some cases, they may be in competition (i.e. light reflectors, outdoor lighting, outdoor lighting fittings). Therefore, they are similar.

The holder argues that its goods target warehouse, retail, cold storage and manufacturing businesses, whereas the opponent’s goods are commonly sold seasonally through garden centres and general retailers. In this regard, the holder submits some copies of extracts taken from its website. It should be borne in mind that, within the context of opposition proceedings initiated on the basis of Article 8(1)(b) EUTMR by the proprietor of an earlier trade mark, the examination of a possible similarity between the goods and services covered by the mark applied for and by the earlier mark must be carried out by reference to the list of goods and services covered by those two marks and not to the goods or services actually marketed under those marks (04/04/2014, T-568/12, Focus extreme, EU:T:2014:180, § 30 and the case-law cited therein). The actual or intended use of the goods and services not stipulated in the list of goods and/or services is not relevant for the examination (16/06/2010, T-487/08, Kremezin, EU:T:2010:237, § 71). Therefore, the argument raised by the holder is irrelevant.

2. 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 similar are directed at the public at large and at business customers with specific professional knowledge or expertise in the lighting industry.

The degree of attention may vary from average to high, since the selection of some of the goods in question may involve some important precautions, as is the case for, for instance, electric lights for Christmas trees, emergency lights and security lightings.

In this sense, the impact on safety of goods covered by a trade mark (e.g. lights for vehicles, saws, electric accumulators, electric circuit breakers, electric relays) may result in an increase in the relevant consumer’s degree of attention (22/03/2011, T-486/07, CA, EU:T:2011:104, § 41).

3. The signs

Lumix
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). 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. The possible perception of the conflicting marks as referring to the concept of ‘luminous’, due to their coinciding beginnings ‘Lumi*’, does not exist for those countries where the equivalent to that word is completely different. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Dutch-, Finnish- and Polish-speaking parts of the public.

The signs have no meaning for the Dutch-, Finnish- and Polish-speaking parts of the public and are, therefore, distinctive.

Visually, the signs coincide in the sequence of letters ‘Lumi*’, which constitutes four of the total five letters of the earlier mark. However, they differ in their final letters, ‘x’ of the earlier mark and ‘qs’ of the contested sign, and in the slight stylisation of the contested sign.

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 relevant in the case of the contested sign, in which the stylisation of the letters is close to standard.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Therefore, the signs are visually highly similar.

Aurally, the pronunciation of the conflicting signs is identical in Dutch (lyymɪks), Finnish (lumɪks) and Polish (lumiks).

Therefore, the signs are aurally identical.

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

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. 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 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.

5. 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).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors and, in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (see, to that effect, 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

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).

The goods are similar and the relevant public has a degree of attention that varies from average to high. The earlier mark has an average degree of distinctiveness.

The signs are visually highly similar on account of the coinciding letter sequence ‘Lumi*’, which constitutes the first part of both signs, the section of a sign to which consumers pay most attention. However, the differing letters at the end of the signs, ‘x’ of the earlier mark and ‘qs’ of the contested sign, do not prevent the identical pronunciation of the signs.

Therefore, it is considered that the similarities between the signs are enough to counteract the dissimilarities. The mere presence of the differing letters at the end of the signs and the slight stylisation of the contested sign are not sufficient to counteract the similarity between the signs and the fact that there is a likelihood of confusion, even when the degree of attention of the consumers is enhanced. 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).

In its observations, the holder argues that the earlier trade mark has a low distinctive character given that there are many trade marks that include the prefix ‘LUMI-’. In support of its argument, the holder refers to several EUTM registrations.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the prefix ‘LUMI-’.

Furthermore, as explained above, the signs are meaningless for the Dutch-, Finnish- and Polish-speaking parts of the public. In addition, ‘LUMI-’ is not used as a prefix in any of these territories and, therefore, there is no reason to assume that the relevant public will pay more attention to the end of the signs, as the holder claims; instead, the relevant public will perceive both signs as a whole.

Under these circumstances, the holder’s claims must be set aside.

Considering all the above, there is a likelihood of confusion on the part of the Dutch-, Finnish- and Polish-speaking parts 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 5 236 435. It follows that the contested trade mark must be rejected for all the contested goods.

As earlier European Union trade mark registration No 5 236 435 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 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 holder 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 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

Alexandra APOSTOLAKIS

Marta GARCÍA COLLADO

Richard BIANCHI

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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.