(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— Article8(1)(b) of Regulation (EU) 2017/1001

1On 25August 2015, the applicant, SLL Service GmbH, designated the European Union for international registration No1276543 in respect of the following figurative mark:

2That registration was notified to the European Union Intellectual Property Office (EUIPO) on 3December 2015, pursuant to Council Regulation (EC) No207/2009 of 26February 2009 on the European Union trade mark (OJ 2009 L78, p.1), as amended (replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14June 2017 on the European Union trade mark (OJ 2017 L154, p.1)).

3The 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 15June 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’.

4The application for registration was published in Community Trade Marks Bulletin No231/2015 of 4December 2015.

5On 31August 2016, Elfa International AB filed a notice of opposition pursuant to Article156 of Regulation No207/2009 (now Article196 of Regulation 2017/1001), read in conjunction with Article41 of that regulation (now Article46 of Regulation 2017/1001), to registration of the mark applied for in respect of the goods referred to in paragraph3 above.

6The opposition was based on the following two earlier rights:

–the EU word mark LUMI, which was registered on 3July 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 14June 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:

7The grounds relied on in support of the opposition were those set out in Article8(1)(b) of Regulation No207/2009 (now Article8(1)(b) of Regulation 2017/1001).

8By decision of 14November 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 paragraph3 above on the ground that there was a likelihood of confusion within the meaning of Article8(1)(b) of Regulation No207/2009.

9On 27December 2017, the applicant filed a notice of appeal with EUIPO, pursuant to Articles58 to 64 of Regulation No207/2009 (now Articles66 to 71 of Regulation 2017/1001), against the Opposition Division’s decision.

10By decision of 28August 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 Article8(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.