OPPOSITION No B 2 398 439

Wireless Environment, LLC, 600 Beta Drive, Ste. 100, Mayfield Village, Ohio 44143, 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 08/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 398 439 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 12 657 409 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 12 657 409, . The opposition is based on international trade mark registration No 1 223 086 designating Benelux, Germany, Spain, France, Italy and the United Kingdom, ‘MR BEAMS’. The opponent invoked Article 8(1)(b) EUTMR.

Preliminary remark

In its observations of 10/02/2017, the applicant requested the opposition to be rejected as unfounded because a copy of the registration certificate of the US registration substantiating the priority had not been filed and the certificate of registration of international registration No 1 223 086 had not been provided.

According to Rule 19(2)(a)(i) and (ii) EUTMIR, within the period given for the opponent to present the facts, evidence and arguments in support of the opposition, the opponent shall also file proof of the existence, validity and scope of protection of the earlier trade mark. If the opposition is based on a trade mark which is not a European Union trade mark, a copy of the relevant registration certificate or a copy of the relevant filing certificate (if it is not registered yet) or an equivalent document emanating from the administration with which the trade mark was registered or an application was filed shall be submitted.

In the present case, on 13/08/2014, the opponent submitted an extract from the WIPO ROMARIN database as proof of filing of international registration No 1 223 086. This document shows pending registration. However, on 10/11/2016, within the time limit to submit further facts, evidence and arguments, the opponent submitted another extract from the WIPO ROMARIN database that clearly shows the dates of statements of grant of protection made by the designated Member States. Since the document submitted by the opponent to prove the existence, validity and scope of protection of its earlier right originates from the official database administered by the registering authority and it contains all the necessary information, including the registration dates (dates of statements of protection in the various designated countries), there is no doubt that the earlier mark was duly substantiated, contrary to the claims of the applicant.

Regarding the filing of the registration certificate of the US trade mark on which the international trade mark based its priority under the Paris Convention, the extract from the WIPO official database provides information relating to priority under the Paris Convention and other data relating to the registration of the mark in the country of origin, namely the date of priority (06/02/2014) based on US trade mark No 86 186 127. As the priority right has been accepted by the competent authority, by WIPO in the present case, the EUIPO is not authorised to cast doubt on this priority date and no further proof is required.

Therefore, the opposition is substantiated on the basis of international registration No 1 223 086.

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 an international registration designating more than one territory. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s international trade mark registration No 1 223 086 designating Spain, France and Italy.

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 category 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 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 a broader category, 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 includes, as a broader category, the opponent’s light bulbs. Since the Opposition Division cannot dissect ex officio the broad category 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 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 the opponent’s goods in Class 11. The purpose of the opponent’s goods is to illuminate, that is, provide light, whereas the aforementioned contested goods are used for different purposes, namely heating, 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 sufficient to find them similar.

Contested services in Class 35

Retail services concerning the sale of particular goods are similar to a low degree to those particular 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 opponent’s goods. 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 also apply 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 abovementioned 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 relevant public. Furthermore, they are neither in competition nor complementary. The fact that some goods or services may appear in advertisements is insufficient for a finding of 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 in 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 natures, purposes and methods of use from those of 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, 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 the 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 consist of activities that assist in the working performance of an enterprise, such as clerical and support services. They have different natures, purposes and methods of use from those of the opponent’s goods. Furthermore, they are neither complementary nor in competition. Therefore, the abovementioned contested services are dissimilar to the 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 the collection, analysis and synthesis of data, bearing in mind the specific requirements of the client/manufacturer. In contrast, the opponent’s goods are equipment/installations such as light bulbs; lighting fixtures; 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 relevant public, since the opponent’s goods target the public at large, while the contested services usually target 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 the opponent’s goods.

Along similar lines of reasoning, the broader categories in which the abovementioned 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 basically refer to design services in relation to anything, not only the design of lighting goods; therefore, they are dissimilar to the 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 from those of 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 the opponent’s goods.

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.

In the present case, the goods and services found to be identical or similar are directed at both the public at large and business customers.

The degree of attention is considered average.

3. The signs

MR BEAMS
Earlier trade mark	Contested sign

The relevant territory is Spain, France and Italy.

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 word mark consisting of two letters, ‘MR’, and a word, ‘BEAMS’. The letters ‘MR’ form an abbreviation of the English word ‘Mister’, which means a title used before a surname or full name to address or refer to a man. Although the abbreviation ‘MR’ stands for an English word, because of its common use, it cannot be excluded that part of the Spanish-, French- or Italian-speaking public may perceive the letters ‘MR’ as the abbreviation for the English word ‘Mister’ and the word ‘BEAMS’ as a surname. The word ‘BEAMS’ will not, in any case, be understood with its English meaning by the relevant public and will not be associated with any concept other than that of a surname, if applicable.

The distinctiveness of the elements of the earlier trade mark is considered average, irrespective of whether or not the Spanish-, French- or Italian-speaking public will perceive the elements as a title and a surname because neither of the elements is descriptive, laudatory or allusive in relation to the relevant goods and services.

The contested sign is a figurative mark consisting of the word elements ‘MR’ and ‘BEAMS’ depicted on a black background in green slightly stylised letters. The reasoning above applies equally to the meaning and distinctiveness of these elements.

Due to its size, the word ‘BEAMS’ is more prominent than the letters ‘MR’ and it is the visually dominant element. However, the letters ‘MR’ preceding the word ‘BEAMS’ are clearly visible and will not be overlooked by the relevant public. The black background is of a decorative nature and the verbal elements ‘MR’ and ‘BEAMS’ are considered to be the most distinctive elements in the contested sign.

Visually, the signs coincide in the verbal elements ‘MR’ and ‘BEAMS’. Although the element ‘BEAMS’ is visually dominant in the contested sign, as stated above, the verbal element ‘MR’ preceding it is sufficiently large to be perceived. Therefore, the verbal elements of both signs will be perceived visually by the relevant public as ‘MR BEAMS’. The signs differ in the black background and green slightly stylised typeface of the contested sign.

Therefore, the signs are visually highly similar.

Aurally, the signs are identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The part of the relevant public that will perceive the verbal element ‘MR’ as an abbreviation of the English word ‘Mister’ and the verbal element ‘BEAMS’ as a surname will perceive both signs as ‘MR BEAMS’; therefore, for this part of the relevant public, the signs are conceptually identical.

For the remaining part of the relevant public neither of the signs has a meaning. Since a conceptual comparison is not possible for this part of the public, 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.

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.

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.

5. Global assessment, other arguments and conclusion

In the present case, some of the goods in Class 11 are identical and some of the services in Class 35 are similar to a low degree. The degree of attention of the relevant public is average.

The signs are considered aurally identical and conceptually identical for part of the relevant public and are visually highly similar.

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

In the present case, the signs coincide in their verbal elements ‘MR BEAMS’. Although, in the contested sign, due to its size, the word element ‘BEAMS’ is more dominant than the verbal element ‘MR’, the letters ‘MR’ are clearly visible. Therefore, despite the differences between the signs in the black background and the green slightly stylised typeface, which will be perceived visually, both signs will be referred to identically as ‘MR BEAMS’. Furthermore, as regards the other relevant aspects, the signs will be pronounced identically and are conceptually identical from the point of view of at least part of the relevant public. Therefore, the public will associate the signs with each other as a result of the coinciding verbal elements and might believe that the goods and 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.

It is highly conceivable that the relevant consumer will perceive the contested mark as a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

Considering the above, the Opposition Division finds that there is a likelihood of confusion as far as the goods found to be identical are concerned.

As regards the services that have been found similar to a low degree to the opponent’s goods, it should be recalled that 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).

Therefore, in the present case, it is considered that the aural identity and high degree of visual similarity between the signs, and their conceptual identity for part of the relevant public are sufficient to offset the low degree of similarity between the contested services and the opponent’s goods, and a likelihood of confusion also exists in relation to those services.

Consequently, the contested trade mark must be rejected for the goods and services found to be identical or similar to a low degree to those of the earlier trade mark.

The rest of the contested goods and services are dissimilar. As 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.

International registration No 1 223 086, ‘MR BEAMS’, on which the opposition is based also designates Benelux, the United Kingdom and Germany. However, the scope of protection for these territories is the same, since it covers the same goods as the designations assessed above. Therefore, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected; no likelihood of confusion exists with respect to those goods and services.

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

Michaela SIMANDLOVA

Biruté 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.