OPPOSITION No B 2 644 584

durlum Group GmbH, An der Wiese 5, 79650 Schopfheim, Germany (opponent), represented by Maucher Jenkins, Urachstr. 23, 79102 Freiburg  im Breisgau, Germany (professional representative)

a g a i n s t

A.J. Klaver Holding B.V., Nieuwegracht 26, 3763 LB Soest, the Netherlands (applicant), represented by Algemeen Octrooi- En Merkenbureau B.V., John F. Kennedylaan 2, 5612 AB Eindhoven, the Netherlands (professional representative).

On 21/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 644 584 is upheld for all the contested goods, namely:

Class 11: Apparatus for lighting.

2.        European Union trade mark application No 14 529 242 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 650.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 14 529 242, namely against some of the goods in Class 11. The opposition is based on European Union trade mark registration No 6 572 242. 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 must 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 will be rejected.

The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based.

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 contested application was published on 19/10/2015. Therefore, the opponent should have been required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 19/10/2010 to 18/10/2015 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 apparatus and installations; light diffusers; lights, in particular lights integrated into suspended ceilings.

According to Rule 22(3) EUTMIR, the evidence of use must 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.

However, the Office did not notify the opponent of the applicant’s request for proof of use as it should have according to Rule 22(2) EUTMIR. Even without the express requirement from the Office, the opponent submitted evidence of use and the applicant was later given the possibility to comment on it.

The opponent had previously filed evidence of enhanced distinctiveness through the intensive use of the mark. Therefore, the Opposition Division will take both submissions as evidence of use.

The evidence to be taken into account is the following:

Documents submitted on 26/07/2016:

• Extract from the current opponent’s web page showing illuminating surfaces named ‘Lumeo’.

• Website captures from the Wayback machine archive.org showing the opponent’s web page was operative between 13/12/2007 and 17/03/2016.

• Catalogues of ‘Lumeo’ products dated in 2006, 2010 and 2012, in German, English and French.

Documents submitted on 27/02/2017:

• Affidavit signed by Matthias Reuter, as the opponent’s Managing Director, on 23/02/2017, in German and English.

• Six invoices between 09/08/2010 and 07/10/2015 to clients in UK and Germany for ‘Lumeo’ products.

The affidavit states that since 2004, ‘Lumeo’ designates lighting apparatus and installations sold throughout Europe. It gives the sales figures for the years 2010 to 2015.

The invoices include several ‘Lumeo’ products such as ‘light fitting modules’, ‘folienrahmen transluzent’, or ‘leuchtenkörper’ with the same references as in the catalogues and the web page, and parts and fittings to complete the illuminating spaces in the venues they are installed.

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.

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.

1. The goods

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

Class 11: Lighting apparatus and installations; light diffusers; lights, in particular lights integrated into suspended ceilings.

The contested goods are the following:

Class 11: Apparatus for lighting.

Apparatus for lighting are identically contained in both lists of goods (including synonyms).

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.

The Office cannot share the applicant’s view that the relevant public of the opponent consists of larger businesses, contractors and companies with large offices and that it is therefore, different to the applicant’s public, which is the private consumer. The contested apparatus for lighting may comprehend all kind of lighting apparatus and may consequently as well be purchased by other consumers than professionals. Therefore, in the present case, the goods found to be identical are directed at the public at large.

The degree of attention is considered average.

3. The signs

Lumeo	Lumiko
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).

Both conflicting signs are single-word marks. The earlier consists of the word ‘Lumeo’ and the contested sign of the word ‘Lumiko’.

The applicant claims that the signs are less similar based on the assumption that consumers will inevitably dissect the signs as composed of the prefix ‘LUM-‘ meaning ‘light’ which is not distinctive. However, according to case law, word marks should not be artificially dissected. Dissection is not appropriate unless the relevant public will clearly perceive the components in question as separate elements with a particular meaning(s). The Court has not defined what is to be regarded as a ‘component’ or ‘element’ of a sign. It is easy to identify components when a sign is visually divided into different parts (e.g. separate figurative and verbal components), however, the term ‘component’ encompasses more than these visual distinctions. Ultimately, the perception of the sign by the relevant public is decisive and a component exists wherever the relevant public perceives one. However, this only happens if there are indications within the sign that allow such a dissection like the use of differing colours, fonts, styles or even a hyphen.

In the case at hand, the signs are word marks and therefore, they will be both perceived as single elements. The applicant’s claim is thus unfounded.

The verbal elements of both signs are meaningless for the relevant public. Therefore, both signs are distinctive. In the absence of any meaningful elements, the conceptual comparison does not influence the assessment of similarity of the marks.

Visually, the signs have in common the letters ‘l-u-m-*-*-o’, which are in the same position. However, they differ in the fourth letter ‘e’ in the earlier mark which is replaced by the letters ‘i-k’ in the contested sign.

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 common letters ‘l-u-m-*-*-o’, and differs in the sound of the letters in the middle position which, as described above, are different. Both signs will be pronounced in three syllables,
/LU-ME-O/ the earlier mark and /LU-MI-KO/ 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.

Therefore, the signs are visually and aurally similar to an average degree.

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.

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 evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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.

5. Global assessment, other arguments and conclusion

The contested goods are considered identical to the opponent’s goods and they target the public at large, whose degree of attention is average. Furthermore, the earlier mark has a normal degree of distinctiveness.

The signs under comparison are visually and aurally similar to an average degree and, as a conceptual comparison is not possible, the conceptual aspect has no influence on the assessment of their similarity. Both signs are word marks made up of a single word. The words in each sign have in common four letters out of six in the contested sign and three of them are at their beginnings and the last one is also the same.

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).

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 its observations, the applicant argues that the earlier trade mark has a low distinctive character given that there are many trade marks that start with the letters ‘LUM’ to protect luminaries. In support of its argument the applicant refers to several European Union trade mark 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 start with the letters ‘LUM’. Under these circumstances, the applicant’s claims must be set aside.

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

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 6 572 242. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

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 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 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

Fabian GARCIA QUINTO

Loreto URRACA LUQUE

Gueorgui IVANOV

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