JUDGMENT OF THE GENERAL COURT (Single Judge)
19 March 2019
(*)
(EU trade mark — Opposition proceedings — International registration designating the European Union — Figurative mark Lumiqs — Earlier EU word and figurative marks Lumix — Relative ground for refusal — No likelihood of confusion — Article 8(1)(b) of Regulation (EU) 2017/1001))
In Case T‑133/18,
IQ Group Holdings Bhd, established in Heckmondwike (United Kingdom), represented by S. Carter, Barrister,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by J. Ivanauskas and H. O’Neill, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being:
Krinner Innovation GmbH, established in Straßkirchen (Germany), represented by T. Schmidpeter, lawyer,
ACTION brought against the decision of the First Board of Appeal of EUIPO of 12 December 2017 (Case R 983/2017-1), relating to opposition proceedings between Krinner Innovation and IQ Group Holdings Bhd,
THE GENERAL COURT (Single Judge),
Judge: U. Öberg,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 22 February 2018,
having regard to the response of EUIPO lodged at the Court Registry on 27 June 2018,
having regard to the response of the intervener lodged at the Court Registry on 22 June 2018,
having regard to the decision of the General Court, pursuant to the provisions of Article 14(3) and Article 29 of the Rules of Procedure of the General Court, to attribute the case to U. Öberg, sitting as a single judge,
having regard to the fact that no request for a hearing was submitted by the parties within three weeks after service of notification of the close of the written part of the procedure, and having decided to rule on the action without an oral part of the procedure, pursuant to Article 106(3) of the Rules of Procedure,
gives the following
Judgment
Background to the dispute
1        On 28 April 2014, the applicant, IQ Group Holdings Bhd, obtained, from the International Bureau of the World Intellectual Property Organisation (WIPO), the international registration No 1220053 designating the European Union.
2        The sign which is the subject of the international registration designating the European Union is reproduced below:
3        The goods covered by the international registration in question are in Class 11 of the Nice Agreement concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, and correspond to the following description: ‘Lighting fixtures for commercial use; LED (light-emitting diodes) lamps; light-emitting lighting apparatus; apparatus for lighting; electric lighting apparatus; bulbs for lighting; casings for lights; ceiling light fittings; ceiling lights; desk lights; electric lights; emergency lights; filters for lighting apparatus; gas lights; light bars; light reflectors; light shades; lighting panels; outdoor lightings; outdoor lighting fittings; spot lights; lighting tubes; security lightings; but not including Christmas tree lights or any of the aforesaid goods being for use with Christmas tree lights, and not including festival lights or any of the aforesaid goods for use with festival lights’.
4        On 23 October 2014, the international registration designating the European Union was notified to the European Union Intellectual Property Office (EUIPO) pursuant to Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).
5        The international registration designating the European Union was published in Community Trade Marks Bulletin No 2014/200 of 24 October 2014.
6        On 27 April 2015, the intervener, Krinner Innovation GmbH, filed a notice of opposition, pursuant to Article 41(1)(a) of Regulation No 207/2009 (now Article 46(1)(a) of Regulation 2017/1001),
to the international registration in question inasmuch as it designated the territory of the European Union for all of the goods listed in paragraph 3 of the present judgment.
7        The opposition was based on the following earlier marks:
–        the EU word mark Lumix, lodged on 2 August 2006 and registered on 16 October 2007 under number 5236435, designating goods in Classes 11 and 28 and corresponding, for each of those classes, to the following description:
–        Class 11: ‘lighting installations, namely electric lights for Christmas trees (chains of candle lights or decorative Christmas
tree lights, candle lights without cables, decorative Christmas tree lights without cables), decorative, low-voltage Christmas tree lights’;
–        Class 28: ‘electric decorations for Christmas trees (chains and decorative Christmas tree lights without cables)’;
–        the EU figurative mark, reproduced hereunder,
lodged on 10 August 2006 and registered on 28 September 2007 under number 5236435, designating goods in Classes 11 and 28 and corresponding, for each of those classes, to the following description:
–        Class 11: ‘lighting installations, namely electric lights for Christmas trees (chains of candle lights or decorative Christmas
tree lights, candle lights without cables, decorative Christmas tree lights without cables), decorative, low-voltage Christmas tree lights’;
–        Class 28: ‘electric decorations for Christmas trees (chains and decorative Christmas tree lights without cables)’;
8        The ground relied on in support of the opposition was that referred to in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001).
9        On 16 March 2017, the Opposition Division upheld the opposition in its entirety, refused protection in the European Union for the sign covered by the international registration in question and ordered the applicant to pay the costs.
10      On 11 May 2017, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the decision of the Opposition Division.
11      On 14 July 2017, the list of goods in Class 11 was limited, at the applicant’s request, to ‘high bay and mid bay lighting apparatus for industrial applications incorporating sensors and integrated software, all for the illumination of industrial premises, including without limitation warehouses and cold storage; but not including Christmas tree lights or any of the aforesaid goods being for use with Christmas tree lights and not including festival lights or any of the aforesaid goods for use with festival lights’.
12      By decision of 12 December 2017 (‘the contested decision’), the First Board of Appeal of EUIPO dismissed the appeal.
13      First, the Board of Appeal indicated that the relevant territory was that of the European Union and that the relevant public consisted of the general public, which was to be regarded as reasonably well informed and reasonably observant and circumspect.
14      Next, the Board of Appeal took the view that the goods in Class 11 designated by the international registration in question were, at least, remotely similar to the goods in Classes 11 and 28 designated by the earlier marks in respect of which genuine use had been demonstrated. The Board of Appeal took the view that, despite their different purposes, the goods at issue, namely electric light sources which produce light for illumination purposes, were similar, were aimed at the same consumers, could be produced by the same entities and shared the same distribution channels.
15      Finally, the Board of Appeal took the view that there was an average degree of visual similarity between the conflicting signs, that they were phonetically identical and that there was a conceptual similarity, save for that part of the relevant public which would not link the word element ‘lumi’ to the concept of light.
16      Accordingly, having regard to the average degree of distinctiveness of the earlier marks, the Board of Appeal found that there was a likelihood of confusion, including for the part of the public for which the earlier marks are of weak distinctive character.
Forms of order sought
17      The applicant claims that the Court should:
–        annul the contested decision;
–        allow the application to proceed for registration in respect of the contested goods, as amended;
–        order EUIPO to pay the costs.
18      EUIPO and the intervener contend that the Court should:
–        dismiss the application;
–        order the applicant to pay the costs.
Law
Admissibility
19      EUIPO contends that the applicant’s head of claim, which essentially
requests the Court to issue directions to EUIPO to allow the application for registration at issue, is inadmissible.
20      In that regard, it must be recalled that it follows from settled case-law that, in an action brought before the Courts of the European Union against the decision of a Board of Appeal of EUIPO, EUIPO is required, pursuant to Article 65(6) of Regulation No 207/2009 (now Article 72(6) of Regulation 2017/1001), to take the measures necessary to comply with judgments of the Courts of the European Union. It is therefore not for the General Court to issue directions to EUIPO, but for EUIPO to draw the appropriate inferences from the operative part and grounds of the judgments of the Courts of the European Union (see judgment of 11 July 2007, El Corte Inglés v OHIM — Bolaños Sabri (PiraÑAM diseño original Juan Bolaños), T‑443/05, EU:T:2007:219, paragraph 20 and the case-law cited; judgment of
5 May 2017, Globo Media v EUIPO — Globo Comunicação e Participações (GLOBO MEDIA), T‑262/16, not published, EU:T:2017:315, paragraph 13).
21      It follows that the head of claim requesting the Court to issue directions to EUIPO to allow the application for registration in question is inadmissible.
Substance
22      In support of its action, the applicant puts forward a single plea in law, alleging breach of Article 8(1)(b) of Regulation No 207/2009.
23      It argues, in essence, that the Board of Appeal erred in finding that there was a likelihood of confusion on the part of the relevant public
as regards the earlier marks and the international registration designating the European Union.
24      In the first place, the applicant disputes the Board of Appeal’s assessment of the relevant public and its level of attention and argues that, since the level of attention of the relevant public was not challenged before the Board of Appeal, the latter could not substitute its own assessment in that regard. The applicant supports the Opposition Division’s analysis according to which part of the relevant public will have safety concerns when buying the goods at issue, with the result that the degree of attention of the relevant public varies from average to high.
25      In the second place, the applicant submits that the goods in Class 11 covered by the international registration designating the European Union are not of the same nature and do not have the same intended purpose as the goods in Classes 11 and 28 covered by the earlier marks for which genuine use has been demonstrated. The goods concerned are, in addition, put up for sale in different sections, online as well as in supermarkets, and are neither in competition nor complementary. Furthermore, although they may share distribution channels, there are no reasons to assume that the goods concerned have the same commercial origin. The Board of Appeal, it argues,
therefore erred in finding that they are, at the least, remotely similar.
26      The applicant adds that, even if it were to be assumed that there was a very low degree of similarity between those goods, the Board of Appeal should have found that there was no likelihood of confusion on the part of the relevant public.
27      EUIPO and the intervener dispute the applicant’s arguments.
28      Under Article 8(1)(b) of Regulation No 207/2009, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for is not to be registered if, because of its identity with, or similarity to, an earlier mark and the identity or similarity of the goods or services covered by the marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier mark is protected. The likelihood of confusion includes the likelihood of association with the earlier mark.
29      For the purposes of applying Article 8(1)(b) of Regulation No 207/2009, a likelihood of confusion presupposes both that the marks at issue are identical or similar and that the goods or services which they cover are identical or similar. Those conditions are cumulative (see judgment of 22 January 2009, Commercy v OHIM — easyGroup IP Licensing (easyHotel), T‑316/07, EU:T:2009:14, paragraph 42 and the case-law cited;
judgment of 22 September 2016, Sun Cali v EUIPO — Abercrombie & Fitch Europe (SUN CALI), T‑512/15, EU:T:2016:527, paragraph 45).
30      It is in the light of those considerations that the examination must be carried out as to whether the Board of Appeal acted correctly in finding that there was a likelihood of confusion within the meaning of Article 8(l)(b) of Regulation No 207/2009.
The relevant public and its level of attention
31      According to the case-law, in the global assessment of the likelihood of confusion, account should be taken of the average consumer of the category of goods concerned, who is reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question (judgment of 3 September 2009, Aceites del Sur-Coosur v Koipe, C‑498/07 P, EU:C:2009:503, paragraph 74; see also judgment of 13 February 2007, Mundipharma v OHIM — Altana Pharma (RESPICUR), T‑256/04, EU:T:2007:46, paragraph 42 and the case-law cited).
32      As EUIPO correctly points out, the Court of Justice has held (judgment of 13 March 2007, OHIM v Kaul, C‑29/05 P, EU:C:2007:162, paragraph 57), by the effect of the appeal brought before it, the Board of Appeal is called upon to carry out a new, full examination of the merits of the opposition, in terms of both law and fact (judgment of 24 May 2011, ancotel v OHIM — Acotel (ancotel.), T‑408/09, not published, EU:T:2011:241, paragraph 20).
33      In that regard, it must be held that opposition to an international registration designating the European Union, where it is based on Article 8(1)(b) of Regulation No 207/2009, requires EUIPO to adjudicate on whether the conflicting signs are identical or similar for the relevant public and the goods and services which they cover (see, to that effect, judgments of 18 October 2007, AMS v OHIM — American Medical Systems (AMS Advanced Medical Services), T‑425/03, EU:T:2007:311, paragraph 28, and of 24 May 2011, ancotel., T‑408/09, not published, EU:T:2011:241, paragraph 21).
34      Consequently, the fact that the determination of the relevant public at issue and of its level of attention was not challenged by the applicant before the Board of Appeal in no way precludes EUIPO from having jurisdiction over the question whether the relevant public was correctly identified (judgment of 24 October 2017, Keturi kambariai v EUIPO — Coffee In (coffee inn), T‑202/16, not published, EU:T:2017:750, paragraph 84).
35      In addition, it is not disputed that, as regards the assessment of the likelihood of confusion, the public with the lowest level of attention must be taken into account (judgment of 15 July 2011, Ergo Versicherungsgruppe v OHIM — Société de développement et de recherche industrielle (ERGO), T‑220/09, not published, EU:T:2011:392, paragraph 21). Consequently, on the assumption that the goods at issue target a specialised public as well as average consumers, with the result that the relevant public will display an average to high level of attention, it is appropriate to take into account, in respect of the assessment of the likelihood of confusion, the average EU consumer, who is reasonably well informed and reasonably observant and circumspect.
36      It follows from the foregoing that the Board of Appeal did not err in its assessment of the relevant public and its level of attention.
Comparison of the goods
37      According to settled case-law, in assessing the similarity of the goods or services at issue, all the relevant factors relating to those goods or services should be taken into account. Those factors include, in particular, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary. Other factors may also be taken into account, such as the distribution channels of the goods concerned (see judgments of 21 January 2016, Hesse v OHIM, C‑50/15 P, EU:C:2016:34, paragraph 21 and the case-law cited, and of 11 July 2007, PiraÑAM diseño original Juan Bolaños, T‑443/05, EU:T:2007:219, paragraph 37 and the case-law cited).
38      Moreover, the comparison of the goods required by Article 8(1)(b) of Regulation No 207/2009 must relate to the description, as it appears in the registration document, of the goods covered by the earlier mark relied on in opposition and not to the goods for which that mark is actually used unless, following a request for proof of genuine use of the earlier mark, in accordance with Article 42(2) and (3) of Regulation No 207/2009 (now Article 47(2) and (3) of Regulation 2017/1001), such proof is furnished only in respect of some of the goods or services for which the earlier mark is registered (see judgment of 12 December 2018, Vitromed v EUIPO — Vitromed Healthcare (VITROMED Germany), T‑821/17, not published, EU:T:2018:912, paragraph 27 and the case-law cited).
39      In the present circumstances, it must be noted that the genuine use of the earlier EU word mark Lumix in regard to
some of the goods covered by the intervener’s
mark, namely ‘electric lights for Christmas trees (decorative Christmas tree lights, candle lights without cables, decorative Christmas tree lights without cables)’, in Class 11, and the ‘electric decorations for Christmas trees (decorative Christmas tree lights without cables)’, in Class 28, has not been disputed by the parties.
40      Thus, the comparison must be made by taking into account all of the goods covered by the intervener’s mark for which proof of genuine use of the earlier marks must be considered to have been adduced.
41      In that regard, it must be observed that, pursuant to Rule 2(4) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Council Regulation (EC) No 40/94 on the Community trade mark (OJ 1995 L 303, p. 1), the classification of goods and services under the Nice Agreement is intended to serve exclusively administrative purposes. Goods and services may therefore not be regarded as being similar to each other on the ground that they appear in the same class under the Nice Classification, and may not be regarded as being dissimilar on the ground that they appear in different classes under that classification (judgment of 6 June 2018, Uponor Innovation v EUIPO — Swep International (SMATRIX), T‑264/17, not published, EU:T:2018:329, paragraph 26).
42      In the present case, however, it is clear that the protection of the earlier marks is explicitly restricted to certain goods in Classes 11 and 28 for which they have been registered and does not extend to the goods in Class 11 referred to in the international registration in question. Moreover, the latter registration expressly excludes ‘Christmas tree lights or any of the aforesaid goods being for use with Christmas tree lights’ and ‘festival lights or any of the aforesaid goods for use with festival lights’ covered by the earlier marks.
43      Furthermore, it is not disputed that the goods concerned have different intended purposes. Thus, the goods in Class 11 covered by the international registration designating the European Union are used for practical and industrial purposes, whereas the goods in Classes 11 and 28
covered by the earlier marks, in respect of which proof of genuine use has been demonstrated, serve exclusively decorative and aesthetic purposes for Christmas trees.
44      With regard to the complementarity of the goods concerned, it must be borne in mind that, according to settled case-law, goods or services which are complementary are those between which there is a close connection, in the sense that one is indispensable or important for the use of the other, with the result that consumers may think that the same undertaking is responsible for manufacturing those goods or for providing those services (see judgment of 22 January 2009, easyHotel, T‑316/07, EU:T:2009:14, paragraph 57 and the case-law cited). Thus, for the purposes of assessing whether goods and services are complementary, the relevant public’s perception of the importance of a product or service for the use of another product or service should, ultimately, be taken into account (see, to that effect, judgment of 14 May 2013, Sanco v OHIM — Marsalman (Representation of a chicken), T‑249/11, EU:T:2013:238, paragraph 22 and the case-law cited).
45      However, there are no reasons to assume that such a link exists between the goods at issue
in the present case. It is clear that purchase of the electric lighting apparatus for industrial use covered by the international registration designating the European Union is not conditional on purchase of the electric lights and decorations for Christmas trees covered by the earlier marks, which have a purely decorative function. Indeed, it appears unlikely that the average consumer, looking to decorate his Christmas tree, will seek, necessarily and at the same time, to acquire lighting apparatus for industrial use. The goods concerned are therefore not complementary for the relevant public, given that, apart from their function of providing illumination, there is no close connection between them.
46      It must also be noted that there is no competition between those goods.
47      It follows from the foregoing that lighting apparatus for industrial use, on the one hand, and electric lights and decorations, on the other hand, cannot be deemed to be similar on the basis of the mere fact that they are both ‘light sources’ or ‘electrical lighting apparatus’, given that the nature and intended purpose of those goods are different, and that they are neither complementary nor in competition.
48      EUIPO’s argument that the goods concerned have to be regarded as similar because they might share the same distribution channels must also be rejected. The fact that the goods at issue may, in some cases, share the same distribution channels is not sufficient to make that a factor which has to be taken into consideration in order to assess whether those goods have some degree of similarity (see, to that effect, judgment of 25 January 2017, Sun System Kereskedelmi és Szolgáltató v EUIPO — Hollandimpex Kereskedelmi és Szolgáltató (Choco Love), T‑325/15, not published, EU:T:2017:29, paragraph 44).
49      In addition, the fact that goods may be sold in the same commercial establishments, such as department stores or supermarkets, is not of particular importance, since very different kinds of goods may be found in such retail outlets and consumers do not automatically assume that they are from the same source (see, to that effect, judgment of 26 October 2011, Intermark v OHIM — Natex International (NATY’s), T‑72/10, not published, EU:T:2011:635, paragraph 37 and the case-law cited). Thus, the sale of the goods covered by the conflicting signs may take place in retail outlets which are geographically close, without this giving rise to a clear complementarity between those goods from the consumer’s point of view. The same applies when, as in the present case, the goods at issue are sold online.
50      The evidence provided by the intervener is not such as to invalidate that finding. First, as regards the screenshots intended to show that the goods at issue are offered for sale next to one another on certain websites, it follows from that evidence that the Christmas lights and decorations are sold in a specific category relating to ‘Christmas lighting’ (Weihnachtsbeleuchtung), separate from the other types of lighting. Second, the production of a limited number of website extracts is not capable of demonstrating the existence of a current commercial practice, according to which companies in that field market the goods at issue concomitantly.
51      Finally, even on the assumption that the goods concerned may be used by the same consumers, those considerations are not intrinsically sufficient to support the finding that the goods at issue are similar. In addition, it is not disputed that the goods in Class 11 covered by the international registration designating the European Union are purchased mainly by professionals, and that the goods in Classes 11 and 28 covered by the earlier marks and in respect of which genuine use has been demonstrated are, as a rule, intended for the general public.
52      Therefore, having regard to the differences which characterise the goods concerned, the Board of Appeal erred in finding that they are, at the least, remotely similar.
Comparison of the signs and global assessment of the likelihood of confusion
53      According to settled case-law, the likelihood that the public might believe that the goods or services in question come from the same undertaking or from economically
linked undertakings constitutes a likelihood of confusion. According to that same case-law, the likelihood of confusion must be assessed globally, according to the relevant public’s perception of the signs and goods or services in question and taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and that of the goods or services covered (see judgments of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 33 and the case-law cited, and of 22 September 2016, SUN CALI, T‑512/15, EU:T:2016:527, paragraph 44 and the case-law cited).
54      In the present case, it is apparent from paragraphs 41 to 52 above that the goods in Class 11 covered by the international registration designating the European Union cannot be regarded as similar to the goods in Classes 11 and 28
covered by the earlier marks and in respect of which genuine use has been demonstrated.
55      Inasmuch as one of the conditions required by Article 8(1)(b) of Regulation No 207/2009 for the purpose of establishing that there is a likelihood of confusion, namely the identity or similarity of the goods at issue, is not satisfied, the Board of Appeal erred in finding that there was a likelihood of confusion on the part of the relevant public, notwithstanding the degree of similarity between the conflicting signs.
56      The contested decision must therefore be annulled.
Costs
57      Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.
58      Since EUIPO has been unsuccessful, it must be ordered to bear its own costs and to pay those incurred by the applicant, in accordance with the form of order sought by the latter.
59      In accordance with Article 138(3) of the Rules of Procedure, the intervener must bear its own costs.
On those grounds,
THE GENERAL COURT (Single Judge)
hereby:
1.      Annuls the decision of the First Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 12 December 2017 (Case R 983/2017-1);
2.      Orders EUIPO to bear its own costs and to pay those incurred by IQ Group Holdings Bhd;
3.      Orders Krinner Innovation GmbH to bear its own costs.
Öberg
Delivered in open court in Luxembourg on 19 March 2019.
E. Coulon
M. Prek
Registrar
President
*      Language of the case: English.