LOTO | Decision 2788068
Date Published: Oct 22, 2017
OPPOSITION DIVISION
OPPOSITION No B 2 788 068
Lotos Goldbrillen GmbH, Mulde 15, 75239 Eisingen, Germany (opponent),
represented by Rechtsanwälte Schindhelm & Pfisterer, Weiherstr. 2 – 4, 75173
Pforzheim, Germany (professional representative)
a g a i n s t
Loto Preziosi S.P.A., Via del Gavardello 57, 52100 Arezzo, Italy (holder),
represented by Simone Fabbriciani, Piazza Guido Monaco 11, 52100 Arezzo, Italy
(professional representative).
On 20/10/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 788 068 is partially upheld, namely for the following
contested goods and services:
Class 14: Jewellery articles, namely: rings, bracelets, chains, brooches,
keyrings, necklaces, tie-pins, cuff-links, medals, coins, earrings,
ornaments, pins; jewelry boxes; precious stones; precious metals;
goods in precious metals or coated therewith namely, jewellery;
except for clocks and watches.
Class 37: Repair of jewellery articles; remounting of jewellery.
Class 42: Jewellery design services.
2. International registration No 1 302 997 is refused protection in respect of the
European Union for all of the above goods and services. It may proceed for the
remaining services.
3. Each party bears its own costs.
REASONS
The opponent filed an opposition against all the goods and services of international
registration designating the European Union No 1 302 997 for the word mark ‘LOTO’.
The opposition is based on European Union trade mark registration No 610 642 for
the word mark ‘LOTOS’. The opponent invoked Article 8(1)(b) EUTMR.
Preliminary remark
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
Decision on Opposition No B 2 788 068 page: 2 of 7
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR
A likelihood of confusion exists if there is a risk that the public might believe that the
goods or services in question, under the assumption that they bear the marks in
question, come from the same undertaking or, as the case may be, from
economically linked undertakings. Whether a likelihood of confusion exists depends
on the appreciation in a global assessment of several factors, which are
interdependent. These factors include the similarity of the signs, the similarity of the
goods and services, the distinctiveness of the earlier mark, the distinctive and
dominant elements of the conflicting signs, and the relevant public.
a) The goods and services
The goods on which the opposition is based are the following:
Class 9: Optical apparatus and instruments; spectacles; spectacle frames, in
particular of metal; parts and components for the aforesaid goods,
included in class 9.
Class 14: Precious metals and their alloys and goods of precious metals or coated
therewith (included in class 14); jewellery, precious stones; parts and
fittings for the aforesaid goods, included in class 14.
Class 18: Leather and imitations of leather, and goods made of these materials
(included in class 18); trunks and travelling bags; umbrellas, parasols and
walking sticks; saddlery; parts and fittings for the aforesaid goods, included
in class 18.
The contested goods and services are the following:
Class 14: Jewellery articles, namely: rings, bracelets, chains, brooches, keyrings,
necklaces, tie-pins, cuff-links, medals, coins, earrings, ornaments, pins;
jewelry boxes; precious stones; precious metals; goods in precious metals
or coated therewith namely, jewellery; except for clocks and watches.
Class 37: Repair of jewellery articles; remounting of jewellery; construction; repair;
installation services.
Class 42: Jewellery design services; scientific and technological services and
research and design relating thereto; industrial analysis and research
services; design and development of computer hardware and software.
An interpretation of the wording of the list of goods and services is required to
determine the scope of protection of these goods and services.
The term ‘in particular’, used in the opponent’s list of goods, indicates that the
specific goods are only examples of items included in the category and that
protection is not restricted to them. In other words, it introduces a non-exhaustive list
of examples (09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).
Decision on Opposition No B 2 788 068 page: 3 of 7
However, the term ‘namely’, used in the holder’s list of goods to show the relationship
of individual goods to a broader category, is exclusive and restricts the scope of
protection only to the goods specifically listed.
As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR,
goods or services are not regarded as being similar to or dissimilar from each other
on the ground that they appear in the same or different classes under the Nice
Classification.
The relevant factors relating to the comparison of the goods or services include, inter
alia, the nature and purpose of the goods or services, the distribution channels, the
sales outlets, the producers, the method of use and whether they are in competition
with each other or complementary to each other.
Contested goods in Class 14
The contested precious stones; precious metals; goods in precious metals or coated
therewith namely, jewellery; except for clocks and watches are identically contained
in both lists of goods (including synonyms).
The contested jewellery articles, namely: rings, bracelets, chains, brooches,
keyrings, necklaces, tie-pins, cuff-links, medals, coins, earrings, ornaments, pins are
included in the broad category of the opponent’s jewellery in Class 14. Therefore,
they are identical.
The contested jewellery boxes are similar to the opponent’s jewellery insofar as the
contested goods are articles coated with precious metals, which may be found in
jewellery and antiques shops. These goods may coincide in their relevant publics –
namely the public interested in any type of jewellery accessories and ornaments –
and in their producers, namely those specialised in producing articles of precious
metals. Furthermore, they are complementary.
Contested services in Class 37
The contested repair of jewellery articles can be seen as complementary to the
jewellery in Class 14 covered by the earlier trade mark. The opponent's goods and
these contested services can be found to be similar to a low degree, because they
are targeted at the same public and can be offered by the same undertakings. The
same principles apply to find that the contested jewellery remounting is similar to a
low degree to the opponent’s jewellery in Class 14.
The remaining contested services in this Class, namely construction; repair;
installation services include mainly services rendered by contractors or
subcontractors in the construction of buildings, as well as services rendered by
persons or organisations engaged in the restoration of objects to their original
condition, as well as installation services, rental of cleaning machines and mining
services.
The earlier goods in Classes 9, 14 and 18 are not related to these contested
services. First, their nature is different in that the nature of products fundamentally
implies their manufacture whilst services relate to the addition of added value arising
from a personal or professional activity. Apart from also being different in nature,
given that services are intangible, whereas goods are tangible, they serve different
needs. Furthermore, they have different intended purposes and methods of use.
Their producers, distribution channels and relevant public are usually also different.
Decision on Opposition No B 2 788 068 page: 4 of 7
Therefore, the Opposition Division considers the contested construction; repair;
installation services to be dissimilar to all the opponent’s goods in Classes 9, 14 and
18.
Contested services in Class 42
The contested jewellery design services may target the same relevant public as the
opponent’s jewellery in Class 14, as these goods and services are offered and
provided by the same companies. Consequently, the contested services are deemed
similar to a low degree.
The remaining contested services in this class, namely scientific and technological
services and research and design relating thereto; industrial analysis and research
services; design and development of computer hardware and software include mainly
services provided by persons, individually or collectively, in relation to the theoretical
and practical aspects of complex fields of activities; such services are provided by
members of professions such as chemists, physicists, engineers, computer
programmers etc. These are in particular services of engineers who undertake
evaluations, estimates, research and reports in the scientific, technological, industrial
and computer fields.
The earlier goods in Classes 9, 14 and 18 are not related to the contested services.
First, their nature is different in that the nature of products fundamentally implies their
manufacture whilst services relate to the addition of added value arising from a
personal or professional activity. Apart from also being different in nature, given that
services are intangible, whereas goods are tangible, they serve different needs.
Furthermore, they have different intended purposes and methods of use. Their
producers, distribution channels and relevant public are usually also different.
Therefore, the Opposition Division considers the contested scientific and
technological services and research and design relating thereto; industrial analysis
and research services; design and development of computer hardware and software
to be dissimilar to all the opponent’s goods in Classes 9, 14 and 18.
b) Relevant public — degree of attention
The average consumer of the category of products concerned is deemed to be
reasonably well informed and reasonably observant and circumspect. It should also
be borne in mind that the average consumer’s degree of attention is likely to vary
according to the category of goods or services in question and depending on the
price, degree of sophistication, and intended purpose of the purchased goods and
services.
In the present case, the goods and services found to be identical and similar to
different degrees are directed at the public at large, including professionals. It should
be borne in mind that consumers generally put a certain amount of thought into the
selection of these goods and the rendering of these services, as in many cases these
goods and services involve luxury items, these can have a relatively high price or will
be intended as gifts that are bought with more care. Therefore, a relatively high
degree of attention on the part of the consumer may be assumed.
Decision on Opposition No B 2 788 068 page: 5 of 7
c) The signs
LOTOS LOTO
Earlier trade mark Contested sign
The relevant territory is the European Union.
The global appreciation of the visual, aural or conceptual similarity of the marks in
question must be based on the overall impression given by the marks, bearing in
mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95,
Sabèl, EU:C:1997:528, § 23).
The earlier mark is a word mark made up of the term ‘LOTOS’ which might be
perceived by part of the relevant public, inter alia, the English part of the public, as a
reference to the flower ‘lotus’ (see Collins English Dictionary online). For another part
of the public, this term has no meaning. Anyway, this element has no meaning in
relation to the goods and services at hand and so it is distinctive.
The contested sign is a word mark made up of the term ‘LOTO’ which which might be
perceived by part of the relevant public, inter alia, the Spanish part of the public, as a
reference to the same flower lotus, colloquially called ‘flor de loto’. For another part of
the public, this term has no meaning. Anyway, this element has no meaning in
relation to the goods and services at hand and so it is distinctive.
Visually and aurally, the signs coincide in the letters/sound ‘LOTO’ which
constitutes the whole contested sign. The signs differ in the appearance and
pronunciation of the additional last letter /S/ of the earlier mark. At this point it should
be pointed out that consumers generally tend to focus on the first element of a sign
when being confronted with a trade mark. This is justified by the fact that the public
reads from left to right, which makes the part placed at the left of the sign (the initial
part) the one that first catches the attention of the reader.
Therefore, the signs are visually and aurally similar to a high degree.
Conceptually, although at least part of the public in the relevant territory will
perceive the meaning of one of the marks, as explained above, the other sign has no
meaning in that territory. Since one of the signs will not be associated with any
meaning, the signs are not conceptually similar for part of the relevant public. For the
remaining part of the relevant public that will perceive the marks as meaningless, the
conceptual comparison is not possible. Thus the conceptual aspect does not
influence the assessment of the similarity of the signs.
As the signs have been found similar in at least one aspect of the comparison, the
examination of likelihood of confusion will proceed.
d) Distinctiveness of the earlier mark
The distinctiveness of the earlier mark is one of the factors to be taken into account
in the global assessment of likelihood of confusion.
Decision on Opposition No B 2 788 068 page: 6 of 7
For the sake of completeness, the Opposition Division notes that the opponent
claims that he uses the mark, by stating in its writ dated 6/104/2017 ‘(…) it is also
intensely used in our client’s commercial intercourse.’, furthermore, it refers to
several pieces of evidence to prove the use of the mark. However, at any stage, the
opponent claims enhanced distinctiveness of the mark.
Consequently, the assessment of the distinctiveness of the earlier mark will rest on its
distinctiveness per se. In the present case, the earlier trade mark as a whole has no
meaning for any of the goods in question from the perspective of the public in the
relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as
normal.
e) Global assessment, other arguments and conclusion
The appreciation of likelihood of confusion on the part of the public depends on
numerous elements and, in particular, on the recognition of the earlier mark on the
market, the association which can be made with the registered mark, the degree of
similarity between the marks and between the goods or services identified. It must be
appreciated globally, taking into account all factors relevant to the circumstances of
the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18;
11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).
Such a global assessment of a likelihood of confusion implies some interdependence
between the relevant factors, and in particular, similarity between the trade marks
and between the goods or services. Accordingly, a greater degree of similarity
between the goods may be offset by a lower degree of similarity between the marks,
and vice versa (see, Lloyd Schuhfabrik, § 20; Sabèl, § 24; 29/09/1998, C-39/97,
Canon, EU:C:1998:442, § 17).
The goods and services have been found partly identical and partly similar to
different degrees. The earlier mark has a normal degree of distinctiveness. The signs
are visually and aurally similar to a high degree, whereas conceptually the signs are
not similar for part of the relevant public while for another part the conceptual
comparison does not influence the assessment of the similarity of the signs. The
relevant public is the public at large, including professionals, whose level of attention
is relatively high.
Account is taken of the fact that average consumers rarely have the chance to make
a direct comparison between different marks, but must trust in their imperfect
recollection of them (Lloyd Schuhfabrik, § 26). Having said that, it is stressed that
even consumers who pay a high degree of attention need to rely on their imperfect
recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).
In view of all the relevant factors in the present case and also the principle of
interdependence between them, i.e. the principle that a lesser degree of similarity
between the goods and services may be offset by a greater degree of similarity
between the marks, the relevant public could be mistaken as to the origin of those
services that are similar even only to a low degree. The higher similarity between the
signs will outweigh the low similarity of these contested services.
Considering all the above, the Opposition Division finds that there is a likelihood of
confusion on the part of the relevant public and, therefore, the opposition is partly
well-founded on the basis of the opponent’s European Union trade mark registration
No 610 642.
Decision on Opposition No B 2 788 068 page: 7 of 7
It follows from the above that the contested trade mark must be rejected for the
goods and services found to be identical and similar to a low degree to the earlier
mark’s goods.
The rest of the contested services are dissimilar. As similarity of goods and services
is a necessary condition for the application of Article 8(1) EUTMR, the opposition
based on this article and directed at these goods cannot be successful.
COSTS
According to Article 109(1) EUTMR, the losing party in opposition proceedings must
bear the fees and costs incurred by the other party. According to Article 109(3)
EUTMR, where each party succeeds on some heads and fails on others, or if
reasons of equity so dictate, the Opposition Division will decide a different
apportionment of costs.
Since the opposition is successful for only some of the contested goods and
services, both parties have succeeded on some heads and failed on others.
Consequently, each party has to bear its own costs.
The Opposition Division
Chantal VAN RIEL Klaudia MISZTAL Saida CRABBE
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 EUTMR, notice of appeal
must be filed in writing at the Office within two months of the date of notification of
this decision. It must be filed in the language of the proceedings in which the decision
subject to appeal was taken. Furthermore, a written statement of the grounds for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been filed only when the appeal fee of EUR 720 has been paid.