JUDGMENT OF THE GENERAL COURT (Second Chamber)
9 September 2019 (*)
(EU trade mark — Opposition proceedings — International registration designating the European Union — Figurative mark LUMIN8 — Earlier EU word mark LUMI — Relative ground for refusal — Likelihood of confusion — Article 8(1)(b) of Regulation (EU) 2017/1001)
In Case T‑680/18,
SLL Service GmbH, established in Cologne (Germany), represented by C. Schmitt, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by A. Lukošiūtė and H. O’Neill, acting as Agents,
defendant,
the other party to the proceedings before the Board of Appeal of EUIPO being
Elfa International AB, established in Västervik (Sweden),
ACTION brought against the decision of the Second Board of Appeal of EUIPO of 28 August 2018 (Case R 2752/2017-2), relating to opposition proceedings between Elfa International and SLL Service,
THE GENERAL COURT (Second Chamber),
composed of E. Buttigieg, acting as President, F. Schalin and M.J. Costeira (Rapporteur), Judges,
Registrar: E. Coulon,
having regard to the application lodged at the Court Registry on 15 November 2018,
having regard to the response lodged at the Court Registry on 7 February 2019,
having regard to the fact that no request for a hearing was submitted by the parties within 3 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 of the General Court,
gives the following
Judgment
Background to the dispute
1        On 25 August 2015, the applicant, SLL Service GmbH, designated the European Union for international registration No 1276543 in respect of the following figurative mark:
2        That registration was notified to the European Union Intellectual Property Office (EUIPO) on 3 December 2015, 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)).
3        The goods in respect of which registration was sought are in, inter alia, Classes 6, 19 and 20 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, for each of those classes, to the following description:
–        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’.
4        The application for registration was published in Community Trade Marks Bulletin No 231/2015 of 4 December 2015.
5        On 31 August 2016, Elfa International AB filed a notice of opposition pursuant to Article 156 of Regulation No 207/2009 (now Article 196 of Regulation 2017/1001), read in conjunction with Article 41 of that regulation (now Article 46 of Regulation 2017/1001), to registration of the mark applied for in respect of the goods referred to in paragraph 3 above.
6        The opposition was based on the following two earlier rights:
–        the EU word mark LUMI, which was registered on 3 July 2014 under the number 12591335 and covers ‘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’ in Class 6; ‘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’ in Class 19, and ‘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’ in Class 20;
–        the EU figurative mark LUMI Endless possibilities, reproduced below, which was registered on 14 June 2013 under the number 11499928 and covers ‘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’ in Class 6; ‘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’ in Class 19, and ‘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’ in Class 20:
7        The grounds relied on in support of the opposition were those set out in Article 8(1)(b) of Regulation No 207/2009 (now Article 8(1)(b) of Regulation 2017/1001).
8        By decision of 14 November 2017, the Opposition Division of EUIPO, basing its decision solely on the earlier EU word mark LUMI (‘the earlier mark at issue’), without it being necessary to examine the other earlier mark relied on, upheld the opposition and rejected the application for registration in respect of all the goods referred to in paragraph 3 above on the ground that there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 207/2009.
9        On 27 December 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 Opposition Division’s decision.
10      By decision of 28 August 2018 (‘the contested decision’), the Second Board of Appeal of EUIPO dismissed the appeal after having, like the Opposition Division of EUIPO, examined the opposition in the light solely of the earlier mark at issue. In essence, the Board of Appeal found that, even taking into account a higher level of attention on the part of the relevant public, there was a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation 2017/1001, in particular on account of the identity of the goods at issue, the normal degree of distinctiveness of the earlier mark at issue and the overall visual, phonetic and, at least for part of the relevant public, conceptual similarity of the signs at issue. In that regard, the Board of Appeal stated that the presence of the letter ‘n’, the number 8 and the banal figurative elements of the mark applied for were not likely to influence the consumer’s perception and did not call that similarity into question. Furthermore, the Board of Appeal pointed out that, even if the earlier mark at issue were to be considered as having a low degree of distinctiveness for the whole of the relevant public owing to the meaning of the term ‘lumi’ with regard to the goods at issue, that would not be a sufficient reason to exclude a likelihood of confusion between the marks in question.
Forms of order sought
11      The applicant claims that the Court should:
–        annul the contested decision;
–        order EUIPO to pay the costs.
12      EUIPO contends that the Court should:
–        dismiss the action;
–        order the applicant to pay the costs.
Law
13      The applicant relies on a single plea in law alleging infringement of Article 8(1)(b) of Regulation 2017/1001. That plea consists, in essence, of four parts, which relate to the contested decision in so far as that decision concerns, as regards the first part, the visual comparison of the signs at issue, as regards the second part, the phonetic comparison of the signs at issue, as regards the third part, the conceptual comparison of the signs at issue and, as regards the fourth part, the global assessment of the likelihood of confusion.
14      EUIPO disputes the merits of that single plea.
15      Article 8(1)(b) of Regulation 2017/1001 provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion includes the likelihood of association with the earlier trade mark.
16      According to settled case-law, the risk that the public may 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 the 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 judgment of 9 July 2003, Laboratorios RTB v OHIM — Giorgio Beverly Hills (GIORGIO BEVERLY HILLS), T‑162/01, EU:T:2003:199, paragraphs 30 to 33 and the case-law cited).
17      For the purposes of applying Article 8(1)(b) of Regulation 2017/1001, 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).
The relevant public
18      As regards the definition of the relevant public, it is apparent from paragraph 19 of the contested decision that the Board of Appeal found that, in the present case, the relevant public consisted both of professionals from the building sector and in the field of home maintenance, improvement and renovation and of the general public, namely do-it-yourself amateurs. The Board of Appeal also stated, in paragraph 23 of that decision, that, in the present case, both the professional public and the general public would pay an above average level of attention. Lastly, the Board of Appeal stated, in paragraph 24 of that decision, that account had to be taken of the point of view of the relevant consumers in the whole of the European Union.
19      In the light of the information in the case file, that definition of the relevant public, which is not, moreover, disputed by the parties, must be accepted.
The comparison of the goods
20      As regards the comparison of the goods, the Board of Appeal, in paragraph 25 of the contested decision, confirmed the Opposition Division’s assessment that the goods at issue, namely those referred to in paragraph 3 above, were identical.
21      In the light of the information in the case file, that assessment, which is not, moreover, disputed by the parties, must be accepted.
The comparison of the signs
22      The global assessment of the likelihood of confusion must, so far as concerns the visual, phonetic or conceptual similarity of the signs at issue, be based on the overall impression given by the signs, bearing in mind, in particular, their distinctive and dominant elements (see judgment of 10 September 2008, Boston Scientific v OHIM — Terumo (CAPIO), T‑325/06, not published, EU:T:2008:338, paragraph 88 and the case-law cited). The perception of the marks by the consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood of confusion. In this regard, the consumer normally perceives a mark as a whole and does not engage in an analysis of its various details (see judgment of 12 June 2007, OHIM v Shaker, C‑334/05 P, EU:C:2007:333, paragraph 35 and the case-law cited).
23      According to settled case-law, two marks are similar where, from the point of view of the relevant public, they are at least partially identical as regards one or more relevant aspects, namely the visual, phonetic and conceptual aspects (see judgments of 23 October 2002, Matratzen Concord v OHIM — Hukla Germany (MATRATZEN), T‑6/01, EU:T:2002:261, paragraph 30 and the case-law cited, and of 17 February 2011, Annco v OHIM — Freche et fils (ANN TAYLOR LOFT), T‑385/09, EU:T:2011:49, paragraph 26 and the case-law cited).
24      In that regard, according to the contested decision, the signs at issue are similar, on account of their visual, phonetic and, at least for part of the relevant public, conceptual similarity.
The visual similarity
25      As regards the visual comparison, the Board of Appeal found, in paragraph 44 of the contested decision, that the signs at issue were similar to the extent that they begin with the sequence of letters ‘l’ ‘u’ ‘m’ ‘i’, which constitutes the whole of the earlier mark at issue. By contrast, the Board of Appeal found that the signs differed in the other elements of the mark applied for, such as the additional letter ‘n’ and the number 8 placed at the end of that mark, and the other graphic features of that mark, namely the stylisation of the characters.
26      In that regard, it pointed out, in paragraph 46 of the contested decision, that the graphic features of the mark applied for had a limited impact, since the minimalistic stylisation of the letters in the element ‘lumin’ and of the number 8 was rather common and was not a particularly eye-catching element. Furthermore, it observed, in paragraph 47 of that decision, that the circumstance that the element in common, ‘lumi’, corresponded to the beginning of the mark applied for and was the only element in the earlier mark at issue played an important role, since the identical beginnings were capable of reducing the impact of the additional letter and number which are placed at the end of the mark applied for. It concluded, in paragraph 48 of the contested decision, that there was at least an average degree of visual similarity due to the presence of the element ‘lumi’, which was placed at the beginning of the mark applied for and was the only element in the earlier mark at issue.
27      By the first part of its single plea, the applicant disputes the Board of Appeal’s assessment that the signs at issue are visually similar.
28      In that regard, the applicant submits that the graphic elements in the marks at issue cannot be ignored. It maintains that the characteristic aspects include, in particular, the distinctive design of the letters and of the number 8 in the case of the mark applied for with its particular font. It argues that those characteristic aspects are noticed by the relevant public, which is cognisant of the differences existing in this respect. Furthermore, the applicant submits that it must be noted that the mark applied for includes elements that are not present in the earlier mark at issue, namely the combination of the letter and number ‘n8’ with its particular graphic design.
29      EUIPO disputes the merits of that part of the plea.
30      In that regard, according to the case-law referred to in paragraph 22 above, the visual comparison of the signs must be made by taking into account the overall impression given by those signs, since the consumer normally perceives a mark as a whole and does not engage in an analysis of its various details.
31      In the present case, it must be stated, as the Board of Appeal pointed out, that the signs at issue differ in some elements, like the additional letter ‘n’ and the number 8 placed at the end of the mark applied for, and in other specific features of that mark’s graphic representation. However, the first four letters of the mark applied for are identical to those of the earlier mark at issue and appear in the same order. Moreover, the earlier mark at issue is fully included in the mark applied for and the mark applied for has four of the five letters of which it consists in common with that earlier mark. It follows that those signs have a significant number of letters in the same position in common. Those similarities will be noticed immediately and easily be remembered by the relevant public. Consequently, the overall impression created by the signs at issue is dominated, in each of those signs, by the fact that they have the same sequence of letters, ‘l’ ‘u’ ‘m’ ‘i’, which constitutes the whole of the earlier mark at issue and the beginning of the mark applied for, in common.
32      According to settled case-law, where a figurative mark containing word elements is compared visually to a word mark, the marks are held to be visually similar if they have a significant number of letters in the same position in common and if the word element of the figurative sign is not highly stylised, notwithstanding the graphic representation of the letters in different fonts, in italics or bold, in lower case or upper case, or in colour (see, to that effect, judgment of 24 October 2017, Keturi kambariai v EUIPO — Coffee In (coffee inn), T‑202/16, not published, EU:T:2017:750, paragraph 101 and the case-law cited).
33      In that regard, it must be stated that the similarities between the signs at issue cannot be counteracted by the differences which are referred to by the applicant and set out in paragraph 28 above. Those differences are secondary and are not therefore sufficient, in the context of an overall visual assessment, to outweigh the similarities.
34      As the Board of Appeal correctly pointed out, the graphic features of the mark applied for have a limited impact, since the minimalistic stylisation of the letters in the element ‘lumin’ and of the number 8 is rather commonplace and is not a particularly eye-catching element. First, the word element of the mark applied for is not highly stylised, but has a rather simple style. Secondly, the figurative elements and the graphic structure of that mark are not in any way capable of creating a graphic feature which is particularly striking in the eyes of the relevant public and is capable of attracting its attention.
35      Furthermore, as the Board of Appeal correctly pointed out, the fact that the element in common, ‘lumi’, corresponds to the first part of the mark applied for and is the only element in the earlier mark at issue is of the utmost importance because the identical beginnings are capable of reducing the impact of the additional letter ‘n’ and number 8 which are placed at the end of the mark applied for. According to settled case-law, the consumer is deemed generally to pay greater attention to the beginning of a mark than to its end, as the first part of a mark normally has a greater impact, both visually and phonetically, than the final part (see judgment of 22 May 2012, Sport Eybl & Sports Experts v OHIM — Seven (SEVEN SUMMITS), T‑179/11, not published, EU:T:2012:254, paragraph 36 and the case-law cited). That case-law is particularly applicable in the present case because the first part, which is common to the signs at issue, consists of word elements that the relevant public in the territory of the European Union usually reads from left to right.
36      It follows that, as is apparent from the overall impression created by the signs at issue, those signs are visually similar to an average degree overall. Consequently, the Board of Appeal’s assessment, on the basis of the overall impression created by the signs at issue, that there is at least an average degree of visual similarity between those signs is not marred by error, with the result that the first part of the single plea must be rejected.
The phonetic similarity
37      As regards the phonetic comparison of the signs, the Board of Appeal found, in paragraph 49 of the contested decision, that the comparison had to be carried out between the word elements of the signs at issue, namely ‘lumi’ and ‘lumin8’, taking into account that the figurative elements of the mark applied for had no bearing. It pointed out, in paragraph 50 of that decision, that it was apparent that the pronunciation of those signs coincided in the pronunciation of the identical combination of letters ‘l’ ‘u’ ‘m’ ‘i’, which represent the first part of the mark applied for and is the only element in the earlier mark at issue. By contrast, the Board of Appeal found that, irrespective of their pronunciation in the different languages in the European Union, the signs differed in the sound of the additional letter ‘n’ and the number 8 in the mark applied for.
38      The Board of Appeal concluded, in paragraph 51 of the contested decision, that, from a phonetic point of view, there was at least an average degree of similarity between the signs at issue, given that the marks fully coincided as regards the pronunciation of the letter sequence ‘l’ ‘u’ ‘m’ ‘i’, which constitutes the sole element in the earlier mark at issue and the beginning of the mark applied for. It took the view that that fact alone was liable to create strong visual and phonetic similarities between those signs. In that regard, the Board of Appeal found, in paragraph 52 of that decision, that the addition of the number 8, which is included in the mark applied for, could not be sufficient to rule out such visual and phonetic similarities between the two marks, which were created by the presence of the element in common, ‘lumi’. It found that such an element, regardless of whether it was dominant within the mark applied for, would be liable, being placed at the beginning, to attract the public’s attention more than the number 8 and the additional letter ‘n’ at the end of the word element ‘lumin’ in the mark applied for.
39      Lastly, the Board of Appeal stated, in paragraph 53 of the contested decision, that, in those circumstances, the presence of the number 8 might even make consumers more likely to identify, in the mark applied for, the element ‘lumi’, which is common to both marks, as a number is clearly distinct from a combination of letters. It pointed out that that would be particularly evident for the Finnish public for which ‘lumi’ means ‘snow’ and ‘lumin’ is the possessive form of the noun, with the result that the literal translation of the sign LUMIN8 could be ‘the 8th (version/edition) of LUMI’.
40      By the second part of its single plea, the applicant criticises the Board of Appeal for finding that the signs at issue were phonetically similar.
41      In particular, the applicant submits that, when comparing the earlier mark at issue with the element ‘lumineight’, ‘luminacht’ or even ‘luminhuit’ from a phonetic angle, the first thing to be considered is that the word element ‘eight’, which is represented in the mark applied for in the form of the number 8, does not constitute a descriptive indication with regard to the goods concerned and does not have any material significance. It maintains that the word element ‘eight’ is, on the contrary, distinctive and must be taken into consideration in that form in the assessment of the marks at issue.
42      Furthermore, the applicant submits that it is apparent, comparing the marks at issue from a phonetic perspective, that those marks contain a different number of syllables. It maintains that, whereas the earlier mark LUMI contains only two syllables — lu-mi —, the mark LUMINEIGHT has a total of three syllables — lu-min-eight. The applicant argues that that fact alone clearly indicates that there is no phonetic similarity between the marks at issue. It maintains that that is all the more so because the final syllable ‘eight’ is long and prominent, is pronounced and heard with the main word and thus has a special phonetic relevance. It submits that that analysis is confirmed by the general principle that, in shorter word marks, the last syllable is neither suppressed nor does it go unheard. According to the applicant, it is, moreover, necessary to draw attention to the fact that both of the middle syllables in the marks at issue, namely ‘mi’ and ‘min’, are clearly phonetically different. It argues that the final syllable ‘mi’ in the earlier mark LUMI is enunciated by the consumer in an elongated manner, with a long, soft ‘i’, that is to say ‘lumiiiiiii’. It submits that, by contrast, the syllable ‘min’ in the mark applied for ends abruptly with a hard ‘n’.
43      EUIPO disputes the merits of that part of the plea.
44      In that regard, according to the case-law referred in paragraph 22 above, the phonetic comparison of the signs must be carried out by taking into account the overall impression given by those signs, as the average consumer normally perceives a mark as a whole and does not engage in an analysis of its various details.
45      In the present case, it must be stated, as the Board of Appeal pointed out, that the signs at issue differ in the sounds of the letter ‘n’ and of the number 8 in the mark applied for. However, in the light of the characteristics of the signs at issue which are referred to in paragraph 31 above, namely, in particular the fact that they have in common the same sequence of letters ‘l’ ‘u’ ‘m’ ‘i’, which constitutes the whole of the earlier mark at issue and the beginning of the mark applied for, the overall phonetic impression created by the signs at issue is dominated, in each of those signs, by the fact that their pronunciation coincides fully as regards the element ‘lumi’, and that is so regardless of the rules of pronunciation used by the relevant public in the territory of the European Union.
46      Furthermore, in the light of those characteristics of the signs at issue and the case-law cited in paragraph 35 above, which is particularly applicable in the present case for the same reasons as those set out in that paragraph, it must be held that those signs are phonetically similar.
47      In that regard, it must be stated that the similarities between the signs at issue cannot be counteracted by the differences which are referred to by the applicant and set out in paragraphs 41 and 42 above. Those differences are secondary and are not therefore sufficient, in the context of an overall phonetic assessment, to outweigh the similarities.
48      As the Board of Appeal rightly pointed out, the mere addition of the word element ‘eight’, which is represented in the mark applied for in the form of the number 8, cannot be sufficient to rule out the phonetic similarity between the signs at issue that is created by the identical pronunciation of the element ‘lumi’, which is common to those signs. In the light of the case-law cited in paragraph 35 above, the identical pronunciation of that common element, which is placed at the beginning of the mark applied for, will be likely, precisely on account of that position, to attract the relevant public’s attention more than the sound made by the additional letter ‘n’ or number 8 that are placed at the end of the word element ‘lumi’ of that mark. In those circumstances, the presence of the number 8 may even make consumers more likely to identify, in the mark applied for, the element ‘lumi’, which is common to both marks, as a number is clearly distinct from a combination of letters (judgment of 20 February 2018, Kwang Yang Motor v EUIPO — Schmidt (CK1), T‑45/17, not published, EU:T:2018:85, paragraph 47).
49      Furthermore, it must be pointed out, as the Board of Appeal observed in paragraph 43 of the contested decision, that the word element ‘eight’, in the form of the number 8, attached to the term ‘lumin’, has a normal degree of distinctiveness. That element does not convey any particular meaning or any specific concept and cannot be considered to be more relevant than the term ‘lumin’.
50      Furthermore, it must be stated that, in spite of the fact that the earlier mark at issue consists of two syllables, whereas the mark applied for consists of three, the sound made by the additional letter ‘n’ and number 8, which are placed at the end of the word element ‘lumi’ in that latter mark, does not create a significant difference in the overall phonetic impression created by the signs at issue. The sound produced by those additional elements is not sufficient, in the context of an overall phonetic assessment, to outweigh the similarity of those signs, which is characterised by the fact that they have the sound arising from the pronunciation of the same element ‘lumi’, which is situated at the beginning of those signs, in common.
51      It follows that, as is apparent from the overall impression created by the signs at issue, those signs are phonetically similar to an average degree overall. Consequently, the Board of Appeal’s assessment, on the basis of the overall impression created by the signs at issue, that those signs are phonetically similar to at least an average degree, is not marred by error, with the result that the second part of the single plea must be rejected.
The conceptual similarity
52      As regards the conceptual comparison of the signs at issue, the Board of Appeal found, in paragraph 54 of the contested decision, that some consumers in the European Union might understand the common word elements ‘lumi’ and ‘lumin’ as allusive of ‘light’ because of the Latin word ‘lumen’. It stated that those were, in particular, consumers who speak English (‘luminous’), French (‘lumineux’, ‘la lumière’), Spanish (‘luminoso’, ‘la lumbre’) or Italian (‘luminoso’, ‘il lume’). It found that therefore, in respect of that part of the relevant public, there was a conceptual similarity between those signs to the extent that they evoked the concept of ‘light’. The Board of Appeal, however, stated, in paragraph 55 of that decision, that a significant part of the relevant public in the European Union would not link the word elements ‘lumi’ and ‘lumin’ to the concept of ‘light’. It found that that concerned, in particular, the part of the public which does not speak English or a Romance language, including consumers, for example, from Poland.
53      The Board of Appeal also pointed out, in paragraph 56 of the contested decision, that, as regards the part of the relevant public that was likely to perceive the concept of ‘light’ in the element ‘lumi’ in the earlier mark at issue and the element ‘lumin’ of the mark applied for, there would be at least a low degree of conceptual similarity between the signs at issue. In that regard, it stated that the number 8 did not convey any specific concept and would not alter the conceptual similarity between the terms ‘lumi’ and ‘lumin’. The Board of Appeal also pointed out, in paragraph 57 of that decision, that, as regards the remainder of the relevant public, which would not understand the meaning of the terms ‘lumi’ and ‘lumin’, the signs at issue would be viewed as fanciful terms, with the result that no conceptual comparison could be made.
54      By the third part of its single plea, the applicant disputes the Board of Appeal’s assessment that the signs at issue are conceptually similar.
55      In that regard, the applicant submits that that lack of conceptual similarity stems from the very fact that the mark applied for does not have any objective link with the goods at issue. It maintains, moreover, that the mark applied for can, depending on how it is pronounced, induce the relevant public to make associations with, first, the term ‘lumen’, that is to say the Latin word for ‘light’, and, secondly, the term ‘nuit’ in French or ‘Nacht’ in German, or even ‘night’ in English. It argues that the mark applied for can be construed as meaning ‘nuit de lumière’ or ‘Lichtnacht’ or even ‘light night’. According to the applicant, that has nothing whatsoever to do conceptually with the term ‘lumi’.
56      EUIPO disputes the merits of that part of the plea.
57      In the present case, it must be stated, as the Board of Appeal pointed out in paragraphs 54 and 56 of the contested decision, that part of the relevant public in the European Union might understand the terms ‘lumi’ and ‘lumin’ as alluding to ‘light’ on account of the Latin word ‘lumen’. That could be the case as regards the relevant public that speaks, in particular, English (‘luminous’), French (‘lumineux’ or ‘lumière’), Spanish (‘luminoso’ or ‘lumbre’) or Italian (‘luminoso’ or ‘lume’). Consequently, as regards that part of the relevant public that is likely to perceive the concept of ‘light’ in the element ‘lumi’ of the earlier mark at issue and in the element ‘lumin’ of the mark applied for, there would be at least a low degree of conceptual similarity between the signs at issue. In that regard, it must be stated that the number 8, attached to the term ‘lumin’, does not convey any specific concept, as has been pointed out in paragraph 49 above, and cannot therefore alter that similarity between the terms ‘lumi’ and ‘lumin’.
58      However, it must also be stated, as the Board of Appeal pointed out in paragraphs 55 and 57 of the contested decision, that another part of the relevant public in the European Union might not be able to link the terms ‘lumi’ and ‘lumin’ to the concept of ‘light’. That could be the case as regards the relevant public which does not speak, in particular, English or a Romance language. Consequently, as far as that public which does not understand the meaning of the terms ‘lumi’ and ‘lumin’ is concerned, those terms will be perceived as fanciful and it is therefore impossible to make a conceptual comparison of the signs at issue (see judgment of 23 October 2017, Tetra Pharm (1997) v EUIPO — Sebapharma (SeboCalm), T‑441/16, not published, EU:T:2017:747, paragraph 66 and the case-law cited).
59      As regards the applicant’s argument that the mark applied for LUMIN8 can be construed by the relevant public, depending on how it is pronounced, as meaning ‘nuit de lumière’ or ‘Lichtnacht’ or even ‘light night’ and therefore has nothing to do conceptually with the term ‘lumi’, it must be held that that interpretation is unrealistic. Furthermore, that interpretation requires the relevant public concerned to make a mental effort in order to arrive at that meaning. It must be stated that the association of the elements ‘lumin’ and ‘8’ invoked by the applicant does not result in a clear and specific meaning being attached to the mark applied for. However, according to the case-law, conceptual differences between two signs are capable of counteracting visual and phonetic similarities between them only if at least one of those signs has a clear and specific meaning for the relevant public, so that that public is capable of grasping it immediately (see judgment of 13 May 2016, Market Watch v EUIPO — Glaxo Group (MITOCHRON), T‑312/15, not published, EU:T:2016:303, paragraph 32 and the case-law cited). Consequently, that argument on the part of the applicant cannot reasonably succeed.
60      It follows that, as is apparent from the overall impression created by the signs at issue, those signs are, at least for part of the relevant public, namely that part which is likely to perceive the concept of ‘light’ in the element ‘lumi’ of the earlier mark at issue and in the element ‘lumin’ of the mark applied for, conceptually similar overall to a low degree. In that regard, it must be borne in mind that, for an EU trade mark to be refused registration, it is sufficient that a relative ground for refusal for the purposes of Article 8(1)(b) of Regulation 2017/1001 exists in part of the European Union, with the result that the perception of only one part of the relevant public in the European Union may be relied on for the purposes of comparing the signs at issue conceptually (see, to that effect, judgment of 7 February 2018, Kondyterska korporatsiia ‘Roshen’ v EUIPO — Krasnyiy oktyabr (Representation of a crayfish), T‑775/16, not published, EU:T:2018:74, paragraph 57 and the case-law cited).
61      Consequently, the Board of Appeal’s assessment, on the basis of the overall impression created by the signs at issue, that those signs are conceptually similar to at least a low degree for the part of the relevant public that is likely to perceive the concept of ‘light’ in the element ‘lumi’ of the earlier mark at issue and the element ‘lumin’ of the mark applied for, is not marred by error, with the result that the third part of the single plea must be rejected.
The likelihood of confusion
62      On the basis of all of the findings that it made as regards the relevant public, the comparison of the goods and the comparison of the signs, the Board of Appeal found, in paragraph 67 of the contested decision that there was a likelihood of confusion, within the meaning of Article 8(1)(b) of Regulation 2017/1001, between the marks at issue with regard to the goods concerned, even taking into account a higher level of attention on the part of the relevant public. In particular, as is apparent from paragraphs 60 to 62 of that decision, it found that such a likelihood of confusion existed, inter alia, on account of the identity of the goods at issue, the normal degree of distinctiveness of the earlier mark at issue and the overall visual, phonetic and, at least for part of the relevant public, conceptual similarity of the signs at issue.
63      In that regard, the Board of Appeal stated, in paragraph 61 of the contested decision, that the presence of the letter ‘n’, the number 8 and the banal figurative elements of the mark applied for were not likely to influence the consumer’s perception and did not call that overall similarity of the signs at issue into question. Furthermore, the Board of Appeal pointed out, in paragraphs 62 and 63 of that decision, that, even if the earlier mark at issue were to be regarded as having a low degree of distinctiveness for the whole of the relevant public owing to the meaning of the term ‘lumi’ with regard to the goods in question, that would not be a sufficient reason to exclude a likelihood of confusion between the marks in question, because the mark applied for reproduced in its entirety the sole element ‘lumi’ of the earlier mark at issue.
64      By the fourth part of its single plea, the applicant submits, in essence, that the Board of Appeal incorrectly assessed the factors which are relevant with regard to the global assessment of the likelihood of confusion. In particular, the applicant submits that, in view of the marks at issue, there can be no doubt that the overall consideration of the case, taking into account the perceptions of the relevant public and the interdependence between the similarity of the signs at issue and that of the goods concerned, leads to the conclusion that there is no likelihood of confusion between the marks at issue.
65      In that regard, the applicant submits that it must be taken into account that, according to settled case-law, it is necessary to examine together the visual, phonetic and conceptual aspects of the similarity between the signs at issue and to ascertain if they can counteract one another. It maintains that it is particularly true that a total absence or low degree of similarity in relation to the phonetic aspect, to which a particularly large amount of importance is attributed, is therefore sufficient to counteract a low degree of similarity in relation to the visual or conceptual aspects, with the consequence that, from the overall perspective, absolutely no or even just a low degree of similarity may be deemed to exist. The applicant states that, if it is held, in the present case, that there is absolutely no similarity between the trade marks at issue from a phonetic or conceptual perspective, that aspect then counteracts any possible low degree of visual similarity. It submits that the same, of course, applies vice versa.
66      EUIPO disputes the merits of that part of the plea.
67      In that regard, as has been pointed out in paragraph 16 above, according to settled case-law, the risk that the public may 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 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 (see judgment of 30 June 2015, La Rioja Alta v OHIM — Aldi Einkauf (VIÑA ALBERDI), T‑489/13, EU:T:2015:446, paragraph 68 and the case-law cited).
68      A global assessment of the likelihood of confusion implies some interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and that of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (judgments of 29 September 1998, Canon, C-39/97, EU:C:1998:442, paragraph 17, and of 14 December 2006, Mast-Jägermeister v OHIM — Licorera Zacapaneca (VENADO with frame and others), T‑81/03, T‑82/03 and T‑103/03, EU:T:2006:397, paragraph 74).
69      For the purposes of that global assessment, the average consumer of the category of goods concerned is deemed to be reasonably well informed and reasonably observant and circumspect. However, account should be taken of the fact that the average consumer only rarely has the chance to compare the various marks directly and must therefore rely on his imperfect recollection of them. 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 22 June 1999, Lloyd Schuhfabrik Meyer, C‑342/97, EU:C:1999:323, paragraph 26).
70      As regards the applicant’s argument that the lack, in the present case, of phonetic and conceptual similarity between the signs at issue counteracts any low degree of visual similarity that there might be, it is sufficient to state, as has been examined in the context of the comparison of the signs in paragraphs 22 to 61 above, that, since there is, on the contrary, an average degree of visual and phonetic similarity and, at least for part of the relevant public, a low degree of conceptual similarity between the signs at issue, the Board of Appeal was fully entitled to find, in paragraph 58 of the contested decision, that, ‘overall’, the signs at issue were ‘similar to an average degree’. The counteraction invoked by the applicant could not therefore apply. Consequently, that argument cannot reasonably succeed.
71      Furthermore, the Board of Appeal’s assessment, in paragraph 39 of the contested decision, regarding the normal degree of distinctiveness of the earlier mark at issue, an assessment which has not, moreover, been formally challenged by the applicant before the Court, must be upheld.
72      In the present case, in view of all the factors relevant in the context of a global assessment of the likelihood of confusion between the marks at issue and, in particular, of the identity of the goods at issue (see paragraphs 20 and 21 above), the overall visual, phonetic and, at least for part of the relevant public, conceptual similarity of the signs at issue (see paragraphs 36, 51 and 61 above) and the normal degree of distinctiveness of the earlier mark at issue (see paragraph 71 above), it must be held that there is a likelihood of confusion between the marks at issue on the part of the relevant public referred to in paragraph 18 above, even when a higher level of attention on the part of that public is taken into account.
73      Consequently, the Board of Appeal was fully entitled to find, without infringing Article 8(1)(b) of Regulation 2017/1001, in paragraph 67 of the contested decision, in the context of a global assessment of the likelihood of confusion, that, even taking into account a higher level of attention on the part of the relevant public, there was, in the present case, a likelihood of confusion between the marks at issue. It follows that the Board of Appeal’s assessment of the factors that are relevant with regard to the global assessment of the likelihood of confusion is not marred by error, with the result that the fourth part of the single plea must also be rejected.
74      Moreover, it must be pointed out, as observed by the Opposition Division and the Board of Appeal of EUIPO, that there is no need to examine the applicant’s arguments concerning the other earlier mark, namely the earlier EU figurative mark LUMI Endless possibilities. Since a likelihood of confusion with regard to only one earlier mark is sufficient to uphold the opposition on the basis of Article 8(1)(b) of Regulation 2017/1001 and the Court has held, in paragraph 73 above, that the Board of Appeal was fully entitled to find, without infringing that provision, that there was such a likelihood of confusion between the mark applied for and the earlier mark at issue, namely the earlier EU word mark LUMI, those arguments must be held to be ineffective, inasmuch as they cannot lead to the annulment of the contested decision in that regard.
75      In conclusion, in view of all of the foregoing considerations, the single plea in law put forward by the applicant must be rejected as unfounded and the action must therefore be dismissed in its entirety.
Costs
76      Under Article 134(1) of the Rules of Procedure, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings. Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the form of order sought by EUIPO.
On those grounds,
THE GENERAL COURT (Second Chamber)
hereby:
1.      Dismisses the action;
2.      Orders SLL Service GmbH to pay the costs.
Buttigieg
Schalin
Costeira
Delivered in open court in Luxembourg on 9 September 2019.
E. Coulon
E. Buttigieg
Registrar
Acting as President
*      Language of the case: English.