OPPOSITION DIVISION

OPPOSITION No B 2 445 776

Beko plc, Beko House, 1 Greenhill Crescent, Watford, Hertfordshire WD18 8QU,

United Kingdom (opponent), represented by Beck Greener, Fulwood House,

12 Fulwood Place, London WC1V 6HR, United Kingdom (professional

representative)

a g a i n s t

LG Electronics Inc., 128, Yeoui-daero, Yeongdeungpo-gu, Seoul 150-721, Republic

2. European Union trade mark application No 13 142 336 is rejected in its entirety.

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

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95

have been repealed and replaced by Regulation (EU) 2017/1001 (codification),

Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)

2017/1431, subject to certain transitional provisions. All the references in this

decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to

the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against all the goods and services of European

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

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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

including those for scientific research in laboratories other than for medical use;

apparatus for recording, transmission or reproduction of sound or images; sound and

video recording, amplifying, reproducing and transmitting apparatus and instruments;

tape and tape cassette recorders and playback machines; optical disk recorders and

playback machines; record playing apparatus and instruments; loud speakers;

earphones and headphones; radios, radio receivers and radio signal tuners; video

recorders and video playback machines; video cameras; television apparatus and

instruments; remote control apparatus and instruments; optical, photographic and

cinematographic apparatus and instruments; telecommunications and telephone

apparatus and instruments; aerials; satellite broadcast receiving apparatus and

measuring amount of consumption in units and time; apparatus and instruments for

conducting, switching, transforming, accumulating, regulating or controlling electricity

including cables used for electric and electronic purposes; batteries, accumulators,

anodes and cathodes; apparatus for warning and alarms other than for vehicles,

electric bells; cash registers; apparatus and peripheral devices for data processing;

telecommunication apparatus and devices; parts and fittings for all the aforesaid

goods.

Class 37: Maintenance and installation services in respect of electrical appliances

including machines and machine tools all for domestic purposes; providing repair,

maintenance and installation services in respect of washing machines and

disposal machines, electric polishing machines for household purposes, vacuum

cleaners; providing repair, maintenance and installation services in respect of

electrical hair trimmers, electrical hair clippers, electrical epilating devices, electrical

men’s razors, electrical women’s razors; providing repair, maintenance and

installation services in respect of electrical and electronic apparatus and instruments,

sound and video recording, amplifying, reproducing and transmitting apparatus and

instruments; providing repair, maintenance and installation services in respect of

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tape and tape cassette recorders and playback machines, optical disk recorders and

playback machines; providing repair, maintenance and installation services in respect

of record playing apparatus and instruments, loud speakers, earphones and

headphones, radios, radio receivers and radio signal tuners; providing repair,

maintenance and installation services in respect of video recorders and video

services in respect of optical, photographic and cinematographic apparatus and

instruments, telecommunications and telephone apparatus and instruments;

storage of audio, video or computer data for use with domestic appliances, electric

irons and presses; providing repair, maintenance and installation services in respect

of apparatus for lighting, heating, steam generating, cooking, refrigerating, drying,

ventilating, water supply and sanitary purposes; providing repair, maintenance and

installation services in respect of cooling and freezing apparatus, appliances and

containers, refrigerators, freezers, air conditioning, air cooling and ventilation

apparatus and instruments; providing repair, maintenance and installation services in

respect of electric apparatus for making beverages, installations, apparatus,

appliances and utensils all for cooking, stoves, ovens, microwave ovens, toasters

and griddles, barbecues and grills; providing repair, maintenance and installation

appliances; services relating to heating, air conditioning and plumbing installation

and maintenance; services relating to furniture maintenance, restoration and

upholstery.

The contested goods and services are the following:

Class 9: Measuring and control devices for air conditioning technology, all the

business; thermostats for vehicles; thermostats; automatic heat control apparatus;

automatic vacuum control apparatus; program control apparatus; temperature

indicator labels (not for medical purposes); automatic humidity control apparatus;

the field of energy-saving; advisory services relating to energy efficiency.

An interpretation of the wording of the list of goods and services is required to

determine the scope of protection of these goods and services.

The term ‘including’, used in the opponent’s list of goods and services, indicates that

the specific goods and services are only examples of items included in the category

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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).

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR,

goods or services are not regarded as being similar to or dissimilar from each other

The relevant factors relating to the comparison of the goods or services include, inter

The contested measuring devices for air conditioning technology, all the

aforementioned products used in industry or provided only between business to

business; temperature indicator labels (not for medical purposes) are included in, or

overlap with, the opponent’s broad category of measuring apparatus and

instruments, indicators and laboratory materials. They are identical.

Furthermore, the contested control devices for air conditioning technology, all the

aforementioned products used in industry or provided only between business to

business; thermostats for vehicles; thermostats; automatic heat control apparatus;

automatic vacuum control apparatus; program control apparatus; automatic humidity

contested controlling and checking goods overlaps with the opponent’s measuring

apparatus and instruments, indicators and laboratory materials. Therefore, they are

also considered identical.

Contested services in Class 42

The contested certifying as to the energy efficiency of buildings; professional

installations; energy auditing; diagnostic services relating to energy management;

consultancy in the field of energy-saving; advisory services relating to energy

efficiency are all services related to energy efficiency management, inter alia, in

experts and companies may prepare preliminary sketches, drawings or plans and

proposals detailing possible improvements in energy efficiency and combinations or

replacements of features or installations in the building to increase energy efficiency

or diagnose and monitor energy use.

The opponent’s services relating to heating, air conditioning and plumbing installation

and maintenance in Class 37 cover all the services involved in the physical

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maintenance of the particular installations in buildings, namely heating, air

conditioning and plumbing. Because heating and air conditioning systems are closely

related to the energy supply in buildings, it cannot be completely ruled out that there

may be some similarity between the two categories of services in their providers,

distribution channels and target public. In particular and generally speaking, the

contested professional services provided in the field of energy efficiency. Consumers

may assume that, following the preparation of a detailed plan for increasing energy

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 to a low

degree are directed at the public at large, as well as at professionals with specific

knowledge or expertise in the relevant field. The public’s degree of attentiveness may

vary from average to high, depending on the price, specialised nature, or terms and

c) The signs

BECON

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 is a figurative mark consisting of the verbal element ‘beko’ in blue

rather standard lower case letters with a blue angled line underneath. The contested

sign is the word mark ‘BECON’ in upper case letters. However, in the case of word

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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

relevant public of the European Union is sufficient to reject the contested application.

The verbal elements ‘BEKO’ and ‘BECON have no meaning in relation to the goods

and services for the relevant public and are, therefore, considered distinctive to a

normal degree.

The signs have no elements that could be considered clearly more dominant than

other elements.

Visually, the signs coincide in the letters ‘BE*O*’. They differ in their third letters, ‘K’

in the earlier mark and ‘C’ in the contested sign, as well as in the additional last letter

‘N’ in the contested sign. However, consumers generally tend to focus on the

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, in the present case, the

consumer’s recollection will be most likely limited to the perception of the distinctive

verbal element ‘BEKO’. Therefore, the signs are considered 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

‛BEKO*’ because the letters ‘K’ and ‘C’ will be pronounced identically by the relevant

Conceptually, neither of the signs has a meaning for the public in the relevant

territory in relation to the goods and services in question. 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.

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d) Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account

According to the opponent, the earlier mark has been extensively used and enjoys an

enhanced scope of protection. However, for reasons of procedural economy, 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

Likelihood of confusion must be assessed globally, taking into account all the

circumstances of the case. 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

In the present case, the goods in question are identical and the services are similar

to a low degree. The degree of attention of the public varies between average and

high depending on the sophisticated nature of the goods and services, as explained

above in section b). The earlier mark has a normal degree of distinctiveness.

The signs in question are visually similar to an average degree and aurally highly

similar, since they contain the same sequence of letters or identically pronounced

letter/sound (‘N’) in a non-prominent position in the contested sign, namely at the

end. As pointed out above, consumers usually pay most attention to the beginnings

of signs and, moreover, the ‘N’ at the end of the sign may be barely audible for some

Furthermore, 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). In the

present case, it was shown in the comparison of the services that the two conflicting

signs operate or may operate in the same or similar business fields, in particular in

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the sector of building maintenance and auxiliary services related to increasing the

energy efficiency of a building. In these circumstances, even if professional

consumers with higher degree of attention are involved, it cannot be completely ruled

out that the abovementioned differences are insufficient for these consumers to

safely distinguish between the signs. The letters ‘K’/‘C’ and the last letter, ‘N’, as

The applicant refers to previous decisions of the Office to support its arguments.

(30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and

outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous cases referred to by the applicant are not relevant

to the present proceedings as they concern short signs, considered such according

to the established Office practice, namely signs containing between one and three

characters (letters or numbers).

In view of the above, it follows that, even if the previous decisions submitted to the

Opposition Division are to some extent factually similar to the present case, the

outcome may not be the same.

Considering all the above, there is a likelihood of confusion on the part of the

Spanish- and French-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

Therefore, the opposition is well founded on the basis of the opponent’s European

Union trade mark registration No 12 866 877. It follows that the contested trade mark

the admissibility of the proof of use request of the opponent in relation to those earlier

rights.

Since the opposition is fully successful on the basis of the ground of Article 8(1)

(b) EUTMR, there is no need to further examine the other ground of the opposition,

namely Article 8(5) EUTMR.

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COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must

bear the fees and costs incurred by the other party.

costs incurred by the opponent in the course of these proceedings.

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.

The amount determined in the fixation of the costs may only be reviewed by a

decision of the Opposition Division on request. According to Article 109(8) EUTMR