The Malaysian company IQ Group Holdings filed an application for LUMIQS as an European trademark through the Madrid system for the following goods:
Class 11: ‘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; spotlights; 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’.
Against this application, an opposition was filed by the German company Krinner Innovation on the ground of its earlier European trademark LIMIX for classes:
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)’;
Initially, EUIPO upheld the opposition considering both signs similar for similar goods.
In the appeal, however, the General Court annulled this decision concluding that EUIPO erred in its assessment regarding the goods similarity.
According to the court:
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.
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.
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.
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. 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.
The full text of this decision can be found here.