EUIPO Rejected the Registration of LUMIN8

A recent judgment prevented SLL Service GmbH from registering the trademark Lumni8 in for goods such as furniture and building and construction materials. On August 25 2015, the applicant SLL Service GmbH applied for registering the figurative mark “LUMIN8” before the European Union for International registration (EUIPO). The application for registration was published in Community Trade Marks Bulletin. On August 31 2016, Elfa International filed a notice of opposition. The opposition was based on two earlier marks namely “LUMI” and “LUMI Endless Possibilities”. The Opposition Division of EUIPO rejected the application and thereafter the applicant filed a notice of appeal with EUIPO The Board of Appeal dismissed the appeal.

Article 8(1) (b) of Regulation 2017/1001 provides that upon opposition by the proprietor of an earlier trademark, the trademark applied for must not be registered if because of its identity with or similarity to the earlier trademark and the identity or similarity of the goods or services covered by the trademarks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trademark is registered.

The goods in respect of which registration was sought belonged to class 6, 19 and 20 of the Nice Agreement. Class 6, 19 and 20 includes building materials, wall sheets, and floor sheets. The applicant claimed that the Court should annul the contested decision and order EUIPO to pay the costs. In connection with this EUIPO prayed to dismiss the action of applicant and order SLL services to pay the costs. The General Court agreed that the applied-for mark and earlier trademarks differ in some elements, like the additional letter ‘n’ and number ‘8’ in the applied-for mark but the first four letters of the marks are identical.

Aside from the letters being identical, it said that the applied-for mark has a number of letters in the same position as they are in the earlier trademarks. 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 ‘I’, ‘u’, ‘m’ and ‘i’. The Court said these similarities are easily noticed and remembered by the public. Following a Settled case-law the Court said that the likelihood of confusion must be assessed globally. The impugned mark and other related marks are similar to the viewpoint of the public. Further, they are at least partially identical as regards one or more relevant aspects, namely the visual, phonetic and conceptual aspects. The Court also found that the signs of both parties are visually similar. Additionally, the Board of Appeal pointed the word “Lumi” is common for both marks and for this reason there is a similarity. While comparing the goods, the Board of Appeal affirmed the decision of the Opposition Division. The General Court in Luxembourg dismissed the action of the applicant. The Court ordered SLL Services GmbH to pay the costs.