OPPOSITION DIVISION
OPPOSITION No B 2 762 451
Elfa International AB, Elfagatan 5, 593 87 Västervik, Sweden (opponent),
represented by Awapatent AB, Jakobsbergsgatan 36, 111 44 Stockholm, Sweden
(professional representative)
a g a i n s t
SLL Service UG, Robert-Perthel-Straße 6, 50739 Köln, Germany (holder),
represented by Seitz Rechtsanwälte Steuerberater, Aachener Str. 621, 50933 Köln,
Germany (professional representative).
On 14/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 762 451 is upheld for all the contested goods, namely:
Class 6: Building and construction materials and elements of metal for
booths, shop fitments and room walls, room floors and room
ceilings such as decorative sheets, wall sheets, floor sheets and
ceiling sheets, pillars, profiled connecting strips and turnbuckles,
profiled strips, doors and door frames; transportable partitions and
separating walls [structures] for dividing rooms.
Class 19: Building and constructing materials and elements [non-metallic] for
booths, shop fitments and room walls, room floors and room
ceilings such as decorative sheets, wall sheets, floor sheets and
ceiling sheets, pillars, profiled connecting strips and turnbuckles,
profiled strips, doors and door frames.
Class 20: Furniture, including booth outfitting parts, especially for events,
presentations and fairs; demountable office furniture; shop shelves;
file shelves; counters, counter tables, display cabinets and wall
shelves for booths and for shop fitments; turnbuckles [non-metallic]
for booths and for shop fitments.
2. International registration No 1 276 543 is refused protection in respect of the
European Union for all of the contested goods. It may proceed for the
remaining goods and services.
3. The holder bears the costs, fixed at EUR 620.
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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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.
Decision on Opposition No B 2 762 451 page: 2 of 8
REASONS
The opponent filed an opposition against some of the goods and services of
international registration designating the European Union No 1 276 543 ,
namely against all of the goods in Classes 6, 19 and 20. The opposition is based on
European Union trade mark registrations No 12 591 335 ‘LUMI’ and No 11 499 928
. 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.
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 12 591 335 ‘LUMI’.
a) The goods
The goods on which the opposition is based are the following:
Class 6: Metal building materials; small items of metal hardware; fittings of
metal for building and furniture; knobs of metal; clothes hooks of
metal; rails of metal; doors frames and door panels of metal; metal
frames for sliding doors; furniture casters of metal.
Class 19: Building materials (non-metallic); doors, doors panels and door
frames, not of metal; cornices, not of metal; wood panelling; cask
wood; folding doors, not of metal; sliding doors.
Class 20: Furniture, mirrors; doors for furniture; lockers; coat hangers; furniture
shelves; edgings of plastic for furniture; clothes hooks, not of metal;
cases of wood and plastic; furniture casters, not of metal; furniture
partitions of wood; furniture fittings, not of metal; cupboard;
wardrobes; sliding door wardrobes.
The contested goods are the following:
Class 6: Building and construction materials and elements of metal for booths,
shop fitments and room walls, room floors and room ceilings such as
decorative sheets, wall sheets, floor sheets and ceiling sheets, pillars,
profiled connecting strips and turnbuckles, profiled strips, doors and
door frames; transportable partitions and separating walls [structures]
for dividing rooms.
Decision on Opposition No B 2 762 451 page: 3 of 8
Class 19: Building and constructing materials and elements [non-metallic] for
booths, shop fitments and room walls, room floors and room ceilings
such as decorative sheets, wall sheets, floor sheets and ceiling
sheets, pillars, profiled connecting strips and turnbuckles, profiled
strips, doors and door frames.
Class 20: Furniture, including booth outfitting parts, especially for events,
presentations and fairs; demountable office furniture; shop shelves;
file shelves; counters, counter tables, display cabinets and wall
shelves for booths and for shop fitments; turnbuckles [non-metallic] for
booths and for shop fitments.
An interpretation of the wording of the list of goods is required to determine the scope
of protection of these goods.
The terms ‘such as’, ‘including’ and ‘especially’, used in the holder’s list of goods,
indicate that the specific goods are only examples of items included in the categories
and that protection is not restricted to them. In other words, they introduce a non-
exhaustive list of examples (09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).
Contested goods in Class 6
The contested building and construction materials and elements of metal for booths,
shop fitments and room walls, room floors and room ceilings such as decorative
sheets, wall sheets, floor sheets and ceiling sheets, pillars, profiled connecting strips
and turnbuckles, profiled strips, doors and door frames are included in the broad
category of the opponent’s metal building materials. They are identical.
The contested transportable partitions and separating walls [structures] for dividing
rooms overlap with the opponent’s metal building materials, insofar as these
categories include building materials in the nature of prefabricated, transportable
construction elements that can function as partition or separation walls. They are
identical.
Contested goods in Class 19
The contested building and constructing materials and elements [non-metallic] for
booths, shop fitments and room walls, room floors and room ceilings such as
decorative sheets, wall sheets, floor sheets and ceiling sheets, pillars, profiled
connecting strips and turnbuckles, profiled strips, doors and door frames are included
in the broad category of the opponent’s building materials (non-metallic). They are
identical.
Contested goods in Class 20
Bearing in mind the unrestrictive effect of the use of the terms ‘including’ and
‘especially’, as set out above, the contested furniture, including booth outfitting parts,
especially for events, presentations and fairs refers to the same goods as the
opponent’s furniture. They are identical.
The contested demountable office furniture; shop shelves; file shelves; counters,
counter tables, display cabinets and wall shelves for booths and for shop fitments are
included in the broad category of the opponent’s furniture. They are identical.
Decision on Opposition No B 2 762 451 page: 4 of 8
The contested turnbuckles [non-metallic] for booths and for shop fitments are
included in the broad category of the opponent’s furniture fittings, not of metal. They
are identical.
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 are directed at the public at large
and at business customers with specific professional knowledge or expertise. The
degree of attention varies from average to relatively high, depending on the
specialised nature of the goods, the frequency of purchase and their price.
c) The signs
LUMI
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).
Being composed of a single word, the earlier mark has no dominant component by
definition. Although the contested sign comprises two elements that are graphically
separated by the use of a slightly larger font of the sign’s second element, neither of
them can be clearly considered dominant (visually more outstanding).
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 trade
mark.
The word comprising the earlier mark, ‘LUMI’, is meaningful in certain languages of
the European Union, for example it means ‘snow’ in Finnish and Estonian, ‘lamps’ in
Italian, and ‘worlds’ in Romanian. In the perception of this part of the public, the
concept conveyed by the earlier mark puts a distance between the signs. Moreover,
the meaning may diminish the distinctiveness of this word for the goods at issue.
Decision on Opposition No B 2 762 451 page: 5 of 8
However, there is another part of the public, for example consumers in those
countries where the predominant language is English or German, for which ‘LUMI’ is
an invented word and has an average degree of distinctiveness. Also the verbal
component of the contested sign, ‘LUMIN’, will be perceived as a fantasy word in
those language areas and will enjoy normal distinctiveness. Consequently, the
Opposition Division finds it appropriate to focus the assessment of the opposition on
the public in the predominantly English- or German-speaking areas for which the
verbal components of the signs are conceptually neutral.
The public will recognise the numeral ‘8’ in the contested sign and will associate it
with, inter alia, something numbered eight or having eight units. Among the contested
goods, there are building materials that typically consist of several components,
some of them are furniture fittings that can be marketed in packs of several units, and
the rest are furniture in relation to which a numeral may indicate the number of
modules in a set. Since the numeral brings to mind certain characteristics of the
goods at issue, the public will not attribute the same degree of trade mark
significance to this element than to the sign’s verbal component, ‘LUMIN’. The
Opposition Division also agrees with the opponent that the public may perceive the
numeral as denoting the eighth-generation product (i.e. an improved version) of the
same line of goods. Be that as it may, the element ‘8’ is weak for the goods at issue.
Conceptually, since one of the signs will not be associated with any meaning, the
signs are not conceptually similar. However, account must be taken of the fact that
the only meaningful element identified between the signs, namely the numeral ‘8’ of
the contested sign, has limited distinctiveness.
Visually, the signs coincide in the sequence of the letters ‘LUMI’. However, they
differ in the additional letter ‘N’ and the numeral ‘8’ of the contested sign. Although the
contested sign is figurative, the stylisation is confined to a typeface that does not
deviate far from standard, and a slightly larger size of the numeral. Consequently, the
stylisation does not amount to a significant point of visual difference vis-à-vis the
earlier mark.
Considering that the shared letter sequence constitutes the entirety of the earlier
mark and appears in the beginning of the contested sign, whereas any relevant
differences appear in the ending of the contested sign, and also by weighing in the
limited distinctiveness of the element ‘8’, the signs are similar to an average degree.
Aurally, irrespective of the different pronunciation rules in different parts of the
relevant language areas, the pronunciations of the signs coincide in the sound of the
letters ‛LUMI’. The contested sign differs in the additional sounds corresponding to
the letter ‘N’ and the numeral ‘8’, namely the word ‘eight’ in English and ‘acht’ in
German.
The phoneme ‘N’ is a consonant, the addition of which to the shared sound sequence
does not alter the length or intonation of the word element at issue. Based on the
above, but also considering the impact of the additional element ‘8’, even though it
has limited distinctiveness, the signs are similar to a degree somewhat below
average.
The holder claims that, depending on how the contested sign is read and
pronounced, the public may associate it with ‘lumen’, the Latin word for ‘light’, or
‘night’, being ‘Nacht’ in German. The holder also states that the contested sign may
be interpreted as ‘light night’ or ‘Lichtnacht’.
Decision on Opposition No B 2 762 451 page: 6 of 8
However, such scenarios must be set aside as unlikely, because they entail several
mental leaps on the part of the public. The context of the goods in which the
contested sign will be used will not trigger any of the abovementioned associations
either.
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 has no clear
meaning for any of the goods in question from the perspective of the public in the
relevant language areas. Therefore, the distinctiveness of the earlier mark must be
seen as normal.
e) Global assessment, other arguments and conclusion
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).
The contested goods are identical to those covered by the earlier mark, and they are
directed at the general public and professionals whose attentiveness in relation to
these purchases will vary from average to relatively high. The earlier mark enjoys an
average degree of inherent distinctiveness which affords it a normal scope of
protection. The similarity between the signs ranges from a below average degree on
an aural level, to an average degree from a visual perspective. In the perception of
the relevant public, the distinctive elements of the signs, which is where the
similarities between them lie, are conceptually neutral, and the only meaningful
element, namely the numeral ‘8’, has limited distinctiveness.
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).
In the light of the foregoing, also taking into account the principle of interdependence,
the degree of similarity between the signs is sufficient for it to be considered that a
substantial part of the relevant public could reasonably believe that the goods
bearing the contested sign come from the same undertaking, or from economically-
lined undertakings, as those bearing the earlier mark, including where the public’s
attention is enhanced. Even consumers who pay a high degree of attention need to
Decision on Opposition No B 2 762 451 page: 7 of 8
rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel,
EU:T:2013:605, § 54).
It is concluded that there is a likelihood of confusion on the part of the public in the
predominantly English- or German-speaking language areas of the European Union.
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 trade
mark.
Therefore, the opposition is well founded on the basis of the opponent’s European
Union trade mark registration No 12 591 335 ‘LUMI’. It follows that the contested
trade mark must be rejected for all the contested goods.
As earlier European Union trade mark No 12 591 335 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, namely European Union trade mark No 11 499 928
(16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).
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 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 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
Michele M.
BENEDETTI-ALOISI
Solveiga BIEZA Angela DI BLASIO
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
Decision on Opposition No B 2 762 451 page: 8 of 8
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.