OPPOSITION No B 2 398 371

Wireless Environment, LLC, 32333 Aurora Road, Suite 100, Solon Ohio 44139, United States of America (opponent), represented by Cabinet @Mark, 16, rue Milton, 75009 Paris, France (professional representative)

a g a i n s t

Wiel Beheer B.V., Geulecampweg 12, 6942 PB Didam, The Netherlands (applicant), represented by De Merkplaats B.V., Herengracht 227, 1016 BG Amsterdam, The Netherlands (professional representative).

On 24/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 398 371 is partially upheld, namely for the following contested goods and services:

Class 11:         Lighting apparatus and installations; apparatus for lighting.

Class 35:         Retailing and wholesaling in the field of consumer goods and interior articles, namely lighting; bringing together, for others, of a wide variety of goods, enabling customers to conveniently view and purchase those goods, including such services provided online from a computer database relating to lighting; bringing together, for others, of a variety of goods, namely lighting (excluding the transport thereof), enabling customers to conveniently view and purchase those goods; information and consultancy relating to the aforesaid services; all the aforesaid services whether or not provided via electronic channels, including the internet.

2.        European Union trade mark application No 12 657 383 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 12 657 383. The opposition is based on international trade mark registration No 1 223 086 designating Benelux, Germany, Spain, France, Italy and the United Kingdom. The opponent invoked Article 8(1)(a) and (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.

1. The goods and services

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

Class 11:        Light bulbs; lighting fixtures; lighting fixtures with motion detection; battery powered lighting fixtures; electric lighting fixtures, namely, power failure backup safety lighting; sconce lighting fixtures; lanterns for lighting.

Following the amendment of 02/05/2017, the contested goods and services are the following:

Class 11:        Lighting apparatus and installations; apparatus for lighting; apparatus for heating; heating installations; steam generating apparatus; cooking apparatus and installations; refrigerating appliances and installations; drying apparatus and installations; ventilation [air-conditioning] installations and apparatus; water distribution installations and sanitary apparatus and installations.

Class 35:        Advertising; business management; business administration; office functions; publicity and sales promotion; retailing and wholesaling in the field of consumer goods and interior articles, namely furniture and lighting; import and export of consumer goods, namely furniture, furnishing accessories, interior furnishings, lighting, textile goods and printed matter; business consultancy within the framework of product development; promoting the goods and services of others over the internet; providing of information and consultancy on the sale and promotion of commodities and the selection and display of goods; bringing together, for others, of a wide variety of goods, enabling customers to conveniently view and purchase those goods, including such services provided online from a computer database relating to furniture and lighting, textiles, textile goods and printed matter; administrative processing of purchase orders; business operation of catering establishments; setting-up and managing databases; provision of commercial information; market prospecting, research and analysis; compilation and management of online databases and searchable online databases; bringing together, for others, of a variety of goods, namely furniture and lighting, textiles, textile goods and printed matter (excluding the transport thereof), enabling customers to conveniently view and purchase those goods; organisation of trade fairs and exhibitions for commercial or advertising purposes; information and consultancy relating to the aforesaid services; all the aforesaid services whether or not provided via electronic channels, including the internet.

Class 42:        Scientific and technological services and research and design relating thereto; industrial analysis and research services; developing and designing lamps and lighting; interior design in the field of lighting; developing lighting plans and lighting concepts; industrial design; industrial design; interior design consultancy; design of products; quality control; engineering services; technical project studies; styling [industrial design]; information and consultancy relating to the aforesaid services; the aforesaid services also via electronic channels, including the internet.

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 applicant’s list of services in Classes 35 and 42, indicates that the specific services are only examples of items included in the categories and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

However, the term ‘namely’, used in both the applicant’s list of services in Class 35 and the opponent’s list of goods in Class 11 to show the relationship of individual goods and services with broader categories, is exclusive and restricts the scope of protection only to the specifically listed goods and services.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

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.

Contested goods in Class 11

The contested lighting apparatus; apparatus for lighting include, as broader categories, the opponent’s light bulbs. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested lighting installations overlap with the opponent’s lighting fixtures. Therefore, they are considered identical.

The contested apparatus for heating; heating installations; steam generating apparatus; cooking apparatus and installations; refrigerating appliances and installations; drying apparatus and installations; ventilation [air-conditioning] installations and apparatus; water distribution installations and sanitary apparatus and installations are dissimilar to all of the opponent’s goods in Class 11. The purpose of the opponent’s goods is to illuminate, provide light, whereas the aforementioned contested goods are used for different purposes: heating (of the environment or a specific thing), steam generating, cooking, refrigerating, drying, ventilating/cooling, water supply or sanitary purposes. The aforementioned contested goods differ from the opponent’s goods in their nature, purpose and method of use. They are neither in competition with nor complementary to each other. The fact that the goods at issue can be sold in the same outlets is not enough to find them similar.

Contested services in Class 35

Generally retail services concerning the sale of particular goods are similar to a low degree to the corresponding goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public. The aforementioned applies also to wholesale services, and retailing/wholesaling carried out online.

The contested list of services includes retailing and wholesaling activities in relation to consumer goods and interior articles, namely lighting; all the aforesaid services whether or not provided via electronic channels, including the Internet. As shown above in the comparison of goods in Class 11, lighting apparatus and installations are identical to some of the goods covered by the earlier mark. In addition, insofar as the contested information and consultancy relating to the aforesaid services are interrelated with, and cannot be clearly separated from, the abovementioned retailing and wholesaling activities, including such services provided online, and consequently concern the same specific goods, the same considerations apply also to those. Therefore, the contested retailing and wholesaling in the field of consumer goods and interior articles, namely lighting; information and consultancy relating to the aforesaid services; all the aforesaid services whether or not provided via electronic channels, including the Internet are similar to a low degree to the opponent’s light bulbs; lighting fixtures in Class 11.

The activity of retailing/wholesaling of goods as a service does not consist of the mere act of selling the goods, but also includes the services rendered around the actual sale. Therefore, in line with what has been stated above, the retailing/wholesaling of consumer goods and interior articles, namely lighting, and the contested bringing together, for others, of a wide variety of goods, enabling customers to conveniently view and purchase those goods, including such services provided online from a computer database relating to lighting; bringing together, for others, of a variety of goods, namely lighting (excluding the transport thereof), enabling customers to conveniently view and purchase those goods; information and consultancy relating to the aforesaid services; all the aforesaid services whether or not provided via electronic channels, including the Internet are similar to a low degree to the opponent’s light bulbs; lighting fixtures in Class 11.

However, the contested retailing and wholesaling in the field of consumer goods and interior articles, namely furniture; bringing together, for others, of a wide variety of goods, enabling customers to conveniently view and purchase those goods, including such services provided online from a computer database relating to furniture, textiles, textile goods and printed matter; bringing together, for others, of a variety of goods, namely furniture, textiles, textile goods and printed matter (excluding the transport thereof), enabling customers to conveniently view and purchase those goods; information and consultancy relating to the aforesaid services; all the aforesaid services whether or not provided via electronic channels, including the internet and the opponent’s goods in Class 11 are dissimilar. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Similarity between retail/wholesale services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail/wholesale services and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case since the goods at issue are not identical.  

Advertising; publicity and sales promotion; promoting the goods and services of others over the Internet; providing of information and consultancy on the sale and promotion of commodities and the selection and display of goods; information and consultancy relating to the aforesaid services; all the aforesaid services whether or not provided via electronic channels, including the internet consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. Many different means and products can be used to fulfil this objective. These services are provided by specialist companies, which study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, web sites, videos, the internet, etc. The above mentioned contested services and the opponent’s goods in Class 11 are fundamentally different in nature and purpose. They do not have the same usual origin. They do not coincide in the relevant public. Furthermore, they are neither in competition nor complementary. The fact that some goods or services may appear in advertisements is insufficient for finding similarity. Therefore, the abovementioned contested services are dissimilar to the opponent’s goods.

Business management; business administration; business consultancy within the framework of product development; administrative processing of purchase orders; business operation of catering establishments; provision of commercial information; market prospecting, research and analysis; organisation of trade fairs and exhibitions for commercial or advertising purposes; information and consultancy relating to the aforesaid services; all the aforesaid services whether or not provided via electronic channels, including the internet are business support services. They are performed in order to organise and run a business or to set the common goals and the strategic plan for an enterprise and to help companies with the performance of business operations. These services consist of organising people and resources efficiently. They include activities such as personnel recruitment, payroll preparation, drawing up account statements and tax preparation and are usually carried out by an entity that is separate from the business in question. They have different nature, purpose, method of use than the opponent’s goods in Class 11. Furthermore, they are neither in competition nor complementary. Therefore, the abovementioned contested services are dissimilar to the opponent’s goods.

Import and export services relate to the movement of goods and normally require the involvement of customs authorities in both the country of import and the country of export. These services are often subject to import quotas, tariffs and trade agreements. They are preparatory or ancillary to the commercialisation of the goods. They do not relate to the actual retail or wholesale of the goods and therefore specific goods are to be considered dissimilar to import and export services for those goods. The fact that the subject matter of the import/export services and the goods in question are the same is not a relevant factor for finding a similarity. Therefore, contrary to the opponent’s claim, the contested import and export of consumer goods, namely furniture, furnishing accessories, interior furnishings, lighting, textile goods and printed matter; information and consultancy relating to the aforesaid services; all the aforesaid services whether or not provided via electronic channels, including the Internet are dissimilar to opponent’s goods.

Office functions; setting-up and managing databases; compilation and management of online databases and searchable online databases; information and consultancy relating to the aforesaid services; all the aforesaid services whether or not provided via electronic channels, including the internet mainly contain activities that assist in the working performance of an enterprise, such as clerical and support services. They have different nature, purpose, method of use than the opponent’s goods. Furthermore, they are neither complementary nor in competition. Therefore, the abovementioned contested are dissimilar to opponent’s goods.

Contested services in Class 42

Developing and designing lamps and lighting; interior design in the field of lighting; developing lighting plans and lighting concepts are services rendered for others by specialised companies/professionals (designers, developers) whose business is not the manufacture and sale of the goods. The contested services essentially consist of creating and developing concepts and specifications with a view to optimising the function, value and appearance of products through collection, analysis and synthesis of data and having in view the special requirements of the client/manufacturer. In contrast the opponent’s goods are equipment/installations such as lighting fixtures, light bulbs, lanterns for lighting which are used to provide artificial illumination. It follows from the above that the nature, purpose and method of use of the contested services are quite different from the nature, purpose and method of use of the opponent’s goods. Furthermore, they are not complementary to or in competition with one another. They do not coincide in the relevant public either, since the opponent’s goods are directed at the public at large while the contested services are usually aimed at a more specialised public (manufacturers). Therefore, the contested developing and designing lamps and lighting; interior design in the field of lighting; developing lighting plans and lighting concepts; information and consultancy relating to the aforesaid services; the aforesaid services also via electronic channels, including the Internet are dissimilar to opponent’s goods.  

Along the similar lines of reasoning, the broader categories in which the foregoing contested services belong, namely industrial design; industrial design; interior design consultancy; design of products; styling [industrial design]; information and consultancy relating to the aforesaid services; the aforesaid services also via electronic channels, including the internet can refer to basically design services of anything, not only to design of goods related to lighting and therefore, they are also dissimilar to opponent’s goods.

The contested scientific and technological services and research and design relating thereto; industrial analysis and research services; quality control; engineering services; technical project studies; information and consultancy relating to the aforesaid services; the aforesaid services also via electronic channels, including the Internet include activities that are related to the (industrial) disciplines of science and technology. These services have different natures, purposes and methods of use to the opponent’s goods in Class 11. They do not originate from the same undertakings. Furthermore, they are neither in competition nor complementary. Therefore, the abovementioned contested services are dissimilar to opponent’s goods.

2. The signs

MR BEAMS	MR BEAMS
Earlier trade mark	Contested sign

The signs are identical.

3. Global assessment, other arguments and conclusion

The signs are identical and some of the contested goods, namely lighting apparatus and installations; apparatus for lighting in Class 11 are identical to some of the opponent’s goods. Therefore, the opposition must be upheld according to Article 8(1)(a) EUTMR for these goods.

Furthermore, the following contested services are similar to low degree to those covered by the earlier trade mark:

Class 35:        Retailing and wholesaling in the field of consumer goods and interior articles, namely lighting; bringing together, for others, of a wide variety of goods, enabling customers to conveniently view and purchase those goods, including such services provided online from a computer database relating to lighting; bringing together, for others, of a variety of goods, namely lighting (excluding the transport thereof), enabling customers to conveniently view and purchase those goods; information and consultancy relating to the aforesaid services; all the aforesaid services whether or not provided via electronic channels, including the internet.

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 identity of the signs is clearly sufficient for offsetting the low degree of similarity between the goods and services at issue. The Opposition Division finds that there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR and the opposition is upheld also insofar as it is directed against these services.

The rest of the contested goods and services are dissimilar. As the similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods and services cannot be successful.

The opponent stated that the applicant filed the contested trade mark in bad faith. This cannot be a basis for the opposition. Article 41 EUTMR states that an opposition can only be filed on the grounds set forth in Article 8 EUTMR. Since this Article does not include bad faith as a ground for opposition, this point will not be addressed.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Solveiga BIEZA

Birute SATAITE-GONZALEZ

Zuzanna STOJKOWICZ

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.