OPPOSITION No B 2 343 575

Swatch AG (Swatch SA) (Swatch LTD), Jakob-Stämpfli-Str. 94, 2502 Biel/Bienne, Switzerland (opponent), represented by Despacho Gonzalez-Bueno, S.L.P., Calle Velázquez 19, 2º dcha., 28001 Madrid, Spain (professional representative)

a g a i n s t

Ice IP S.A., rue des Tilleuls 3, 8832 Rombach, Luxemburg (applicant), represented by Distinctive Luxemburg Sarl, 2 Domaine Brameschhof, 8290 Kehlen, Grand Duché de Luxembourg, Luxemburg (professional representative).

On 30/11/2015, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 343 575 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods of Community trade mark application No 12 427 911. The opposition is based on Community trade mark registration No 226 019 and Community trade mark registration No 226 316. The opponent invoked Articles 8(1)(b) and 8(5) CTMR

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) CTMR

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.

1. The signs

CTM No 226 019 SWATCH CTM No 226 316	SMONTRE
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The earlier mark under 1) and the contested mark are word marks, while the earlier mark under 2) is a figurative mark. In the case of word marks it is the word as such that is protected and not its written form and therefore it is irrelevant whether it is registered in upper or lower case letters, or in a combination thereof.

Visually, the signs differ in their respective verbal elements and in the stylization of the earlier mark under 2). The mere coincidence in some isolated letters (such as ‘S’ or ‘T’), is not sufficient to render the marks visually similar. As the signs coincide in only irrelevant aspects, it is concluded that the signs are not visually similar.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs does not coincide in any syllable. Although the signs contain some common sounds (such as the sound of the letters ‘S’ and ‘T’), this aspect is considered to be irrelevant, as overall, the marks give different aural impressions. Therefore, it is concluded that the signs are not aurally similar.

Conceptually, as regards the contested mark ‘SMONTRE’, it has no dictionary meaning. At the same time, the French speaking part of the public might perceive the word ‘MONTRE’ meaning ‘a watch’ in English. This is because the relevant public may perceive one-word signs as being composed of different elements, in particular where one of the parts (or all) have a clear and evident meaning.

Contrary to the claim put forward by the opponent, the contested mark is not a translation of the earlier marks. The earlier marks ‘SWATCH’ will be perceived as a “patch or area of a material or surface” by the English speaking part of the relevant public. The English-speaking part of the public will therefore not see a concept of a watch in the earlier marks. For the French speaking part of the public that understands the word ‘MONTRE’ of the contested mark, the word ‘SWATCH' is meaningless and there is no reason to believe that the public will associate it with a watch.

As regards the public in the relevant territory that will only perceive the meaning of the earlier marks, since one of the signs will not be associated with any meaning, the signs are not conceptually similar. The same applies to public that will only grasp the meaning of the word ‘MONTRE’ of the contested mark.

For the remaining part of the public none of the signs have a meaning, and, therefore, a conceptual comparison is not possible.

Considering the above and contrary to the opponent’s arguments, it cannot be held that the contested sign is a French-language version of the opponent’s earlier marks.

As the signs only coincide in irrelevant aspects, it is concluded that they are dissimilar.

2. Conclusion

According to Article 8(1)(b) CTMR, the similarity of the signs is a condition for a finding of likelihood of confusion. Since the signs are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) CTMR is not fulfilled, and the opposition must be rejected. Given that the opposition is not well founded under Article 8(1) CTMR it is unnecessary to examine the evidence of use filed by the opponent.

This finding would still be valid even if the earlier trade mark were to be considered as enjoying a high degree of distinctiveness. Given that the dissimilarity of the signs cannot be overcome by the highly distinctive character of the earlier trade mark the evidence submitted by the opponent in this respect does not alter the outcome reached above.

Consequently, the opposition is rejected as based on the above-mentioned earlier mark, pursuant to Article 8(1)(b) CTMR.

REPUTATION – ARTICLE 8(5) CTMR

According to Article 8(5) CTMR, upon opposition by the proprietor of an earlier trade mark within the meaning of Article 8(2) CTMR, the contested trade mark shall not be registered where it is identical with, or similar to, the earlier trade mark and is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered, where, in the case of an earlier Community trade mark, the trade mark has a reputation in the Community and, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds of refusal of Article 8(5) CTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) CTMR (judgment of 16/12/2010, joined cases T‑345/08 and T‑357/08, ‘BOTOCYL’, paragraph 41). However, the fulfilment of all the above-mentioned conditions may not be sufficient. The opposition may still fail if the [applicant][holder] establishes due cause for the use of the contested trade mark.

1. The signs

The signs have already been compared above under the grounds of Article 8(1)(b)CTMR. Reference is made to those findings, which are equally valid for Article 8(5) CTMR.

As the signs coincide only in irrelevant aspects, the Opposition Division concluded that they are dissimilar.

As seen above, similarity between the signs is a requirement for the opposition to be successful under Article 8(5) CTMR. Since the signs are clearly dissimilar, one of the necessary conditions contained in Article 8(5) CTMR is not fulfilled. Therefore, the opposition must be rejected and there is no need to examine the other conditions laid down by Article 8(5) CTMR (judgment of 24/03/2011, C-552/09 P, ‘Ferrero’, paragraph 66).

It follows from the above that the opposition must be rejected also as far as it is based on the ground of Article 8(5) CTMR.

COSTS

According to Article 85(1) CTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and (7)(d)(ii) CTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Rhys MORGAN

Janja FELC

Eamonn KELLY

According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 800 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) CTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Article 2(30) CTMFR) has been paid.