OPPOSITION DIVISION
OPPOSITION No B 2 729 195
Kaemingk B.V., Broekstraat 13, 7122 MN Aalten, The Netherlands (opponent),
represented by Nlo Shieldmark B.V., New Babylon City Offices, 2e étage Anna van
Buerenplein 21A, 2595DA Den Haag, The Netherlands (professional representative)
a g a i n s t
Suomi-Sähkö Oy, Petikontie 14, 01720 Vantaa, Finland (applicant), represented by
Asianajotoimisto Roihu OY, Bulevardi 6 A 9, 00120 Helsinki, Finland (professional
representative).
On 28/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 729 195 is upheld for all the contested goods.
2. European Union trade mark application No 15 285 133 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 620.
REASONS
The opponent filed an opposition against all the goods of European Union trade mark
application No 15 285 133 LUMENI. The opposition is based on European Union
trade mark registration No 8 643 711 LUMINEO. The opponent invoked Article 8(1)
(b) EUTMR.
Preliminary remark
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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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.
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.
Decision on Opposition No B 2 729 195 page: 2 of 5
a) The goods
The goods on which the opposition is based are the following:
Class 11: Lights, electric, for Christmas trees; Electric candles; LED lighting,
namely for use as Christmas decorations, Easter decorations, garden
decorations and/or home decorations (interior decoration); All the
aforesaid goods exclusively for decorative purposes.
The contested goods are the following:
Class 11: LED luminaires; LED landscape lights; Light-emitting diodes [LED]
lighting apparatus; LED light machines; LED lighting installations; all
the aforesaid goods excluding decorative and Christmas lighting.
An interpretation of the wording of the list of goods is required to determine the scope
of protection of these goods.
The terms ‘namely’ and ‘exclusively’, used in the opponent’s list of goods to show the
relationship of individual goods to a broader category, are exclusive and restrict 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.
In a letter dated 05/01/2017, the applicant requested that its goods be limited by
adding the specification all the aforesaid goods excluding decorative and Christmas
lighting to its list of goods in Class 11. The opponent was duly informed of this
limitation. Following its reply of 06/04/2017, the opposition proceedings were
maintained. It should also be mentioned that, contrary to the arguments put forward
by the applicant in its observations of 18/05/2017, the limitation excludes identity
between the goods at stake, but not necessarily similarity between them.
Therefore, regardless of the limitation, the fact remains that the goods under
comparison are various types of LED lighting apparatus and installations. The
limitation has changed the purpose of the contested goods; however, they still have
the same nature as the opponent’s goods. They may be manufactured by the same
undertakings, target the same public and have the same distribution channels.
Consequently, they have to be considered similar to a low degree.
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 similar to a low degree are directed at the
public at large. The degree of attention is average.
Decision on Opposition No B 2 729 195 page: 3 of 5
c) The signs
LUMINEO LUMENI
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 coinciding
components are descriptive, allusive or otherwise weak is carried out to assess the
extent to which these coinciding components have a lesser or greater capacity to
indicate commercial origin. It may be more difficult to establish that the public may be
confused about origin due to similarities that pertain solely to non-distinctive
elements.
The element ‘LUMENI’ is understood in a part of the European Union (e.g. by the
Dutch, English, French, German, Polish and Romanian speakers) as referring to the
scientific unit of luminous flux ‘lumen’ and is therefore non-distinctive for this part of
the public for the relevant goods in Class 11.
However, for the other part of the public, such as the Greek- and Hungarian-speaking
public, it has no meaning and is distinctive. Therefore, for the purposes of this
comparison and bearing in mind that similarities between signs are higher where the
commonalities are in distinctive elements, the Opposition Division will assess the
signs from the perspective of the Greek- and Hungarian-speaking public.
Both signs are word marks. The earlier mark consists of the word ‘LUMINEO’, which
has no particular meaning for the relevant public. It does not relate to the goods in
question; therefore, it is distinctive. The same conclusion has been drawn for the
word element ‘LUMENI’ of the contested sign.
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.
Visually, the signs coincide in the letters ‘LUM*N’ and in the vowels ‘I’ and ‘E’, which
are in different positions: ‘I*E’ versus ‘E*I’. They differ in the final letter, ‘O’, of the
earlier mark, which has no counterpart in the contested mark. Considering that the
Decision on Opposition No B 2 729 195 page: 4 of 5
signs coincide in their beginnings, they are visually similar at least 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
‘LUM*N’ and the sounds of the vowels ‘I’ and ‘E’, which are pronounced in reverse
order in the conflicting signs. The pronunciation differs in the sound of the final letter,
‘O’, of the earlier mark. Consequently, the signs are similar to an average degree.
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.
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 in the
relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as
normal.
e) Global assessment, other arguments and conclusion
In the present case, the goods are similar to a low degree. The signs are visually and
aurally similar to the extent that they coincide in their beginnings and differ slightly in
the arrangement of the vowels ‘I’ and ‘E’, as well as in the final letter, ‘O’, of the
earlier sign. Generally, consumers tend to focus on the first element of a sign when
being confronted with a trade mark. This is justified by the fact that 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. Consequently, the identical first
parts of the marks at issue have to be taken into account when assessing the
likelihood of confusion between the marks. In addition, according to the principle of
imperfect recollection, average consumers rarely have the chance to make a direct
comparison between different marks, but must trust in their imperfect recollection of
them.
The Court has set out the essential principle that evaluating likelihood of confusion
implies some interdependence between the relevant factors and, in particular, a
similarity between the marks and 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.
Taking into account all of the above, the differences between the signs are not
enough to counteract the visual and aural similarities, which may lead the relevant
Decision on Opposition No B 2 729 195 page: 5 of 5
public to believe that the goods that are similar to a low degree come from the same
undertaking or economically-linked undertakings.
Considering all the above, there is a likelihood of confusion on the part of the
Hungarian- and Greek-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 8 643 711. 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 (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
Oana-Alina STURZA Arkadiusz GORNY Loreto URRACA LUQUE
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
(former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be
filed within one month of the date of notification of this fixation of costs and will be
deemed to have been filed only when the review fee of EUR 100
(Annex I A(33) EUTMR) has been paid.