OPPOSITION No B 2 326 075

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

a g a i n s t

LG Electronics Inc., 128, Yeoui-daero, Yeongdeungpo-gu, Seoul 150-721, Republic of Korea (LA) (applicant), represented by Mitscherlich Patent- und Rechtsanwälte PartmbB, Sonnenstraße 33, 80331 München, Germany (professional representative).

On 02/12/2015, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 326 075 is partially upheld, namely for the following contested goods:

Class 14: Clocks; Wristwatches; Electronic clocks and watches; Electric clocks and watches; Stopwatches; Dials (clock and watch making); Watch crystals; Automobile clocks; Watch chains; Watch cases; Parts for watches; Watch pouches; Table clocks; Necklaces (jewelry); Bracelets (jewelry); Key rings (trinkets or fobs) of precious metal; Wire of precious metal (jewelry); Rings (jewelry).

2. Community trade mark application No 12 480 901 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods of Community trade mark application No 12 480 901. The opposition is based on, inter alia, Community trade mark registration No 226 019 and international trade mark registration designating the European Union No 1 134 259. The opponent invoked Article 8(1)(b) and 8(5) CTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) CTMR, if the applicant so requests, the opponent shall furnish proof that, during the period of five years preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services in respect of which it is registered and which it cites as justification for its opposition, or that there are proper reasons for non-use.

According to the same provision, in the absence of such proof the opposition must be rejected.

The applicant requested that the opponent submit proof of use of the trade marks on which the opposition is based, namely Community trade mark registrations No 226 316 and No 226 019 and international trade mark registration designating Austria, Benelux, Bulgaria, the Czech Republic, Germany, Spain, France, Croatia, Hungary, Italy, Poland, Portugal, Romania, Slovenia and Slovakia No 614 932.

For reasons of procedural economy, the Opposition Division will examine the proof of use in relation to earlier Community trade mark registration No 226 019 only.

According to Article 42(2) and (3) CTMR, the earlier mark can only be subject to the request for proof of use when it has been registered for not less than five years at the date of publication of the contested trade mark.

The request was submitted in due time and is admissible given that the earlier trade mark was registered more than five years prior to the publication of the contested application.

The contested application was published on 16/01/2014. The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in the European Union from 16/01/2009 to 15/01/2014 inclusive. Furthermore, the evidence must show use of the trade marks for the goods on which the opposition is based, namely the following:

Class 14: Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and chronometric instruments.

According to Rule 22(3) CTMIR, the evidence of use shall consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.

On 22/01/2015, within the time limit, the opponent submitted evidence as proof of use. The evidence consists of the following documents:

Annex 2:

• Document No 1: copies of 34 invoices bearing the earlier mark and dated between 2005 and 2009, of which 14 relate to France, 10 to Germany and 10 to Spain. They refer to sales of watches, straps, rings, necklaces, bracelets, earrings and various unidentified goods with fantastical names, all in large quantities and in the amount of millions of euros in total.

• Document No 2: 57 advertisements in various journals and publications such as Elle, Air France Magazine, Glamour, Maxim, Hola, FHM, Marie Claire, Cosmopolitan, Gala, Madame Figaro and Joyce, dating from between 2005 and 2009 and published in France, Germany and Spain, displaying the opponent’s mark in connection with watches and jewellery.

• Document No 3: a report entitled ‘Trends & Entwicklungen in der Modebranche’ (trends & developments in the fashion industry), dating from 2007, according to which 85% of German consumers were aware of the trade mark ‘SWATCH’ in relation to jewellery and wristwatches.

• Document No 4: ‘SwatchClopedia 1983 to 2008’ (a catalogue of Swatch goods).

• Document No 5: a catalogue of Swatch’s 2009 autumn/winter collection, containing numerous pictures of models of watches.

• Document No 6: a catalogue of Swatch’s 2009 spring/summer collection, containing pictures of ‘SWATCH’ jewellery.

• Document No 7: a list of the opponent’s ‘SWATCH’ trade mark registrations in various countries.

Annex 3: recent articles from newspapers published in the European Union, such as El Mundo, El Economista and the Financial Times, containing information about the new sales record achieved by Swatch in 2011. The only document in English states that the ‘Swatch Group had sales of 7.4 billion of dollars in 2011’ and that ‘watches and jewellery, the group’s core division, saw sales rise by more than 14 per cent to SFr 6.31billion’. This document is dated 10/01/2012.

Annex 4: catalogues of ‘SWATCH’ watches and jewellery, dated 2011.

Annex 5: printouts from Swatch’s official website (www.swatch.com) and online store, dated 2012.

Annex 6: printouts from the Swatch website about various ‘SWATCH’ sponsorships in sport (sportsmen and events) and the arts.

Attachment 1: a survey entitled ‘Outfit 5. Target Groups, brands, media / Clothing, accessories, fragrances’, showing that the mark ‘SWATCH’ is known by 89% of the German population.

Attachment 2: catalogues of ‘SWATCH’ watches dating from 2011–13.

Attachment 3: recent advertisements published in various magazines in the European Union, such as Material Girl, Woman, Wienerin, Amica, Glamour, Joy, Cosmopolitan, L’Equipe Sport&Style, Elle, Grazia and Esquire, dated between 2012 and 2014.

Attachment 4: copies of invoices dated between 2012 and 2014 addressed to clients in France, Germany, Spain and the United Kingdom.

Some of the evidence is dated within the relevant period.

Evidence referring to use made outside the relevant timeframe is disregarded unless it contains conclusive indirect proof that the mark was put to genuine use during the relevant period of time.

In the case at hand, the evidence referring to use outside the relevant period confirms use of the opponent’s mark within the relevant period. This is because, when read in conjunction with the rest of the evidence, the evidence referring to use outside the relevant period is helpful in assessing the extent of use during the relevant period and the real intentions of the CTM proprietor.

The invoices, catalogues and other printed matter show that the place of use is at least France, Germany and Spain. This can be inferred from the addresses in the invoices and the languages of the advertisements in various magazines.

The invoices, advertisements and catalogues provide sufficient information concerning the commercial volume, the length of the period and the frequency of the use. Consequently, the evidence of use in its entirety provides sufficient indications regarding the place, time, extent and nature of use of the opponent’s trade mark.

However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods covered by the earlier trade mark.

According to Article 42(2) CTMR, if the earlier trade mark has been used in relation to part only of the goods or services for which it is registered it shall, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.

According to case law, when applying the abovementioned provision the following should be considered:

…if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub‑categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the sub‑category or sub‑categories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.

Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub‑categories.

(Judgment of 14/07/2005, T‑126/03, ‘ALADIN’.)

In the present case the evidence shows genuine use of the trade mark only for jewellery which is included in the opponent’s list of the goods covered by the earlier mark. The evidence also proves use for watches, which can be considered to form an objective subcategory of horological and chronometric instruments. Therefore, the Opposition Division considers that the evidence shows genuine use of the trade mark only for:

Class 14: Watches and jewellery.

Therefore, the Opposition Division will only consider the abovementioned goods in its further examination of the opposition.

REPUTATION – ARTICLE 8(5) CTMR

The opposition is based on more than one earlier trade mark. For reasons of procedural economy, the Opposition Division will first examine the opposition in relation to earlier Community trade mark registration No 226 019 and based on 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 abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

1. The signs

SWATCH	G Watch
Earlier trade mark	Contested sign

The relevant territory is the European Union.

Both marks are word marks. The earlier mark is composed of a single verbal element, ‘SWATCH’, written in upper case letters. The contested sign is composed of two verbal elements, namely the upper case letter ‘G’ and the word ‘Watch’ written in title case letters.

In the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether it is written in upper or lower case letters.

Visually, the signs are similar to the extent that they both contain the letters ‘WATCH’. However, they differ in the first letter, ‘S’, of the earlier mark and in the letter ‘G’ in the contested sign. They also differ in their structures, as the earlier mark is composed of a single verbal element whereas the contested sign is made up of two verbal elements.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs is the same in the sound of the letters ‘WATCH’, present identically in both signs, and to that extent the signs are aurally similar. The pronunciation differs in the sound of the first letter, ‛S’, of the earlier mark and in the sound of the letter ‛G’ in the contested sign. The signs also differ in their rhythms and intonations, as the earlier trade mark has one syllable whereas the contested sign has two syllables.

Conceptually, the earlier mark will be perceived as meaning ‛a sample of cloth’ (information extracted from Collins Dictionaries on 23/09/2015 at http://www.collinsdictionary.com/dictionary/english/swatch) by the English-speaking part of the public in the relevant territory. The rest of the public will perceive the earlier mark as a fanciful term.

The English-speaking part of the public will understand the word ‘Watch’ in the contested sign as meaning, inter alia, ‘a small portable timepiece, usually worn strapped to the wrist (a wristwatch) or in a waistcoat pocket; to look at or observe closely or attentively’ (information extracted from Collins Dictionaries on 23/09/2015 at http://www.collinsdictionary.com/dictionary/english/watch). For the rest of the public, the contested sign has no meaning.

For English-speaking consumers, since the signs will be associated with dissimilar meanings, they are not conceptually similar.

For the rest of the relevant public, neither of the signs as a whole has a meaning. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

Taking into account the abovementioned visual and aural coincidences, the signs under comparison are similar.

2. Reputation of the earlier trade mark

According to the opponent, the earlier trade mark has a reputation in the European Union.

Reputation implies a knowledge threshold which is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case the contested trade mark was filed on 07/01/2014. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in the European Union prior to that date. The evidence must also show that the reputation was acquired for the goods for which the opponent has claimed reputation. However, as mentioned above, since the opponent has proved genuine use only for watches and jewellery, the evidence of reputation will be examined only in relation to these goods, namely:

Class 14: Watches and jewellery.

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

Within the time limit to substantiate its claim of reputation, the opponent submitted the following evidence:

Annex 2:

• Document No 1: copies of 34 invoices bearing the earlier mark and dated between 2005 and 2009, of which 14 relate to France, 10 to Germany and 10 to Spain. They refer to sales of watches, straps, rings, necklaces, bracelets, earrings and various unidentified goods with fantastical names, all in large quantities and in the amount of millions of euros in total.

• Document No 2: 57 advertisements in various journals and publications such as Elle, Air France Magazine, Glamour, Maxim, Hola, FHM, Marie Claire, Cosmopolitan, Gala, Madame Figaro and Joyce, dating from between 2005 and 2009 and published in France, Germany and Spain, displaying the opponent’s mark in connection with watches and jewellery.

• Document No 3: a report entitled ‘Trends & Entwicklungen in der Modebranche’ (trends & developments in the fashion industry’), dating from 2007, according to which 85% of German consumers were aware of the trade mark ‘SWATCH’ in relation to jewellery and wristwatches.

• Document No 4: ‘SwatchClopedia 1983 to 2008’ (a catalogue of Swatch goods).

• Document No 5: a catalogue of Swatch’s 2009 autumn/winter collection, containing numerous pictures of models of watches.

• Document No 6: a catalogue of Swatch’s 2009 spring/summer collection, containing pictures of ‘SWATCH’ jewellery.

• Document No 7: a list of the opponent’s ‘SWATCH’ trade mark registrations in various countries.

Annex 3: recent articles from newspapers published in the European Union, such as El Mundo, El Economista and the Financial Times, containing information about the new sales record achieved by Swatch in 2011. The only document in English states that the ‘Swatch Group had sales of 7.4 billion of dollars in 2011’ and that ‘watches and jewellery, the group’s core division, saw sales rise by more than 14 per cent to SFr 6.31billion’. This document is dated 10/01/2012.

Annex 4: catalogues of ‘SWATCH’ watches and jewellery, dated 2011.

Annex 5: printouts from Swatch’s official website (www.swatch.com) and online store, dated 2012.

Annex 6: printouts from the Swatch website about various ‘SWATCH’ sponsorships in sport (sportsmen and events) and the arts.

Some of the evidence submitted is dated outside the relevant period, such as some invoices and advertisements. However, the evidence dated within the relevant period shows that the opponent has sold, promoted and advertised its goods, watches and jewellery bearing the earlier mark ‘SWATCH’, in Germany, France and Spain. The sales of the goods under the earlier mark demonstrate intensive use of the mark in these parts of the relevant territory. Furthermore, it can be inferred from the documents that the opponent has spent a considerable amount of money on promotion of its mark. The brand appears in numerous magazines and publications. The sales and marketing efforts illustrated by the invoices and in other evidence all suggest that the trade mark has attained an important position in the relevant market. In addition, the document ‘Trends & Entwicklungen in der Modebranche’ clearly shows a high degree of awareness of the ‘SWATCH’ brand among the German public.

Although a certain amount of time elapsed between the most recent evidence relating to reputation and the relevant point in time for proving reputation, account is taken of the relevant market sector and the fact that the evidence the opponent submitted to prove use of its earlier mark proves that it continued to use its mark extensively in subsequent years and, consequently, remained on the market. Therefore, it is considered that the reputation of the opponent’s goods had not diminished at the time of filing of the CTM application.

On the basis of the above the Opposition Division concludes that the earlier trade mark has a reputation in the European Union for some of the goods for which the opponent has claimed reputation, namely:

Class 14: Watches and jewellery.

3. The ‘link’ between the signs

As seen above, the earlier mark is reputed and the signs are similar to some extent. In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) CTMR but has been confirmed in the judgments of 23/10/2003, C‑408/01, ‘Adidas’, paragraphs 29 and 31, and of 27/11/2008, C‑252/07, ‘Intel Corporation’, paragraph 66. It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

Possible relevant factors for the examination of a ‘link’ include (judgment of 27/11/2008, C‑252/07, ‘Intel Corporation’, paragraph 42):

 the degree of similarity between the signs;

 the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;

 the strength of the earlier mark’s reputation;

 the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;

 the existence of likelihood of confusion on the part of the public.

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.

The types of injury referred to in Article 8(5) CTMR may result from a lesser degree of similarity between the marks in question, provided that it is sufficient for the relevant section of the public to make a connection between those marks, that is to say, to establish a link between them (judgment of 23/10/2003, C‑408/01, ‘Adidas-Salomon and Adidas Benelux’, paragraphs 27, 29 and 31; and judgment of 27/11/2008, C‑252/07, ‘Intel Corporation’, paragraphs 57, 58 and 66).

Before examining the opponent’s claims, it is appropriate to recall that the opposition is directed against the following goods:

Class 9: Mobile phones; Television receivers; Universal serial bus hardware drives; Monitors for computers; Laptop computers; Computers; Digital Versatile Disc players; Portable hard disk drives; Apparatus for recording, transmission or reproduction of sound or images; Computer application software; Audio Receivers; Network monitoring cameras namely for surveillance; Digital Signage; Colour printers; Tablet computers; Settop boxes; Scanners; Mouses for computers; Car speakers; Projectors.

Class 14: Clocks; Wristwatches; Electronic clocks and watches; Electric clocks and watches; Stopwatches; Dials (clock and watch making); Watch crystals; Automobile clocks; Watch chains; Watch cases; Parts for watches; Watch pouches; Table clocks; Necklaces (jewelry); Bracelets (jewelry); Key rings (trinkets or fobs) of precious metal; Wire of precious metal (jewelry); Rings (jewelry).

As seen above, the earlier trade mark was found to have a reputation for:

Class 14: Watches and jewellery.

Although the signs differ in their structure, they are similar insofar as they have five of their six letters in common, namely the letters ‘WATCH’.

As for the degree of similarity between the signs required under Article 8(5) CTMR, the Court has held that it differs from that required under Article 8(1)(b) CTMR. Whereas the implementation of the protection provided for under Article 8(1)(b) CTMR is conditional upon a finding of a degree of similarity between the marks at issue such that there exists a likelihood of confusion between them on the part of the relevant section of the public, the existence of such a likelihood is not necessary for the implementation of the protection conferred by Article 8(5) CTMR.

The earlier mark has a strong reputation acquired through use in the European Union for some of the goods, namely watches and jewellery. Some of the contested goods, namely the goods in Class 14, are identical or closely related to the goods for which the reputation of the earlier trade mark has been established and they target the same public.

Therefore, taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that when encountering the contested mark the relevant consumers will be likely to associate it with the earlier sign, that is to say, establish a mental ‘link’ between the signs for the following contested goods:

Class 14: Clocks; Wristwatches; Electronic clocks and watches; Electric clocks and watches; Stopwatches; Dials (clock and watch making); Watch crystals; Automobile clocks; Watch chains; Watch cases; Parts for watches; Watch pouches; Table clocks; Necklaces (jewelry); Bracelets (jewelry); Key rings (trinkets or fobs) of precious metal; Wire of precious metal (jewelry); Rings (jewelry).

However, this is not the case for the remaining contested goods in Class 9. Although the relevant public for the goods may overlap, the use of the contested sign for these contested goods is unlikely to bring the earlier mark to the mind of the relevant public because the contested goods in Class 9 and the opponent’s goods for which its mark has a reputation belong to different and unrelated market sectors. The Opposition Division considers that the degree of similarity between the signs is not sufficient for the consumers to make a link between them in relation to these goods.

As the relevant section of the public for the abovementioned contested goods is unlikely to establish a link between the trade marks in dispute, such a link being a precondition for the application of Article 8(5) CTMR (judgment of 27/11/2008, C‑252/07, ‘Intel Corporation’, paragraphs 30–31), the Opposition Division concludes that the use of the contested trade mark in connection with those goods will not take advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark. The opposition is therefore not well founded under Article 8(5) CTMR insofar as it is directed against those goods.

However, although a ‘link’ between the signs is a necessary condition for further assessing whether detriment or unfair advantage are likely, the existence of such a link is not sufficient, in itself, for a finding that there may be one of the forms of damage referred to in Article 8(5) CTMR (judgment of 26/09/2012, T‑301/09, ‘CITIGATE’, paragraph 96).

4. Risk of injury

Use of the contested mark will fall under Article 8(5) CTMR when any of the following situations arise:

 it takes unfair advantage of the distinctive character or the repute of the earlier mark;

 it is detrimental to the repute of the earlier mark;

 it is detrimental to the distinctive character of the earlier mark.

Although detriment or unfair advantage may be only potential in opposition proceedings, a mere possibility is not sufficient for Article 8(5) CTMR to be applicable. While the proprietor of the earlier mark is not required to demonstrate actual and present harm to its mark, it must ‘adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment’ (judgment of 06/06/2012, T‑60/10, ‘ROYAL SHAKESPEARE’, paragraph 53).

It follows that the opponent must establish that detriment or unfair advantage is probable, in the sense that it is foreseeable in the ordinary course of events. For that purpose, the opponent would have to file evidence, or at least put forward a coherent line of argument, demonstrating what the detriment or unfair advantage would be and how it would occur, which could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

In the present case, the opponent argues that the trade mark ‘SWATCH’ has a high reputation and strong distinctive character due to its extensive use and promotion in the EU and globally. According to the opponent, the contested mark is likely to devalue the image and prestige that the trade mark ‘SWATCH’ has acquired among the public, and that it is easy to harm and tempting to take advantage of the value of the trade mark ‘SWATCH’. The opponent also argues that it would be easy to create an association between the earlier mark and the contested sign due to the strong distinctive character and reputation of the trade mark ‘SWATCH’.

In other words, the opponent claims that use of the contested trade mark would take unfair advantage of the distinctive character or the repute of the earlier trade mark and be detrimental to the distinctive character and repute of the earlier trade mark.

Unfair advantage (free-riding)

Unfair advantage in the context of Article 8(5) CTMR covers cases where there is clear exploitation and ‘free‑riding on the coat‑tails’ of a famous mark or an attempt to trade upon its reputation. In other words, there is a risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods and services covered by the contested trade mark, with the result that the marketing of those goods and services is made easier by their association with the earlier mark with a reputation (judgment of 06/06/2012, T‑60/10, ‘ROYAL SHAKESPEARE’, paragraph 48; and judgment of 22/03/2007, T‑215/03, ‘VIPS’, paragraph 40).

According to the Court of Justice of the European Union

… as regards injury consisting of unfair advantage taken of the distinctive character or the repute of the earlier mark, in so far as what is prohibited is the drawing of benefit from that mark by the proprietor of the later mark, the existence of such injury must be assessed by reference to the average consumers of the goods or services for which the later mark is registered, who are reasonably well informed and reasonably observant and circumspect.

(Judgment of 27/11/2008, C‑252/07, ‘Intel Corporation’, paragraph 36.)

The opponent bases its claim on the following:

• If the contested CTM application is registered, it will benefit from the attractiveness of the trade mark ‘SWATCH’, which is widely known on the market.

• Due to the very strong distinctive character of the trade mark ‘SWATCH’, it is tempting for the applicant to try to benefit from its value and create an association between marks.

• Because of the similarities between the marks and the reputation of the earlier sign, the contested mark will gain an unfair advantage as a consequence of an association between the marks.

• ‘SWATCH’ has acquired not only a high degree of recognition amongst consumers, but also an excellent and very special reputation, in the sense that it reflects an image of excellence, reliability and quality, which positively influences the choice of consumers.

In determining the likelihood that unfair advantage will occur, there are several factors to consider. Those factors include the degree of similarity between the conflicting marks; the nature of the goods and services for which these marks are registered, including the degree of closeness or dissimilarity between those goods and services, and the relevant section of the public; the strength of the earlier mark’s reputation; the degree of the earlier mark’s distinctive character; and the existence of the likelihood of confusion (judgment of 27/11/2008, C‑252/07, ‘Intel Corporation’, paragraph 42).

Taking into account the strong reputation of the earlier mark in the European Union in particular for watches and jewellery, the Opposition Division considers that there is sufficient similarity between the signs for the consumer to form an association between them in respect of the identical or closely related goods.

As claimed by the opponent, the use of the contested mark ‘G Watch’ by the applicant will take unfair advantage of the opponent’s investment in the ‘SWATCH’ trade mark and the earlier mark’s reputation. The opponent has invested money in developing and building the reputation of its earlier mark; it is known by a large proportion of the public in the European Union, and the applicant would benefit from the attraction and prestige of the earlier trade mark without expenditure.

On the basis of the above, the Opposition Division concludes that the contested trade mark will take unfair advantage of the distinctive character or the repute of the earlier trade mark.

Other forms of encroachment upon reputation

The opponent also argues that use of the contested trade mark would be detrimental to the repute of the earlier trade mark.

As seen above, encroachment upon reputation is an essential condition for Article 8(5) CTMR to apply. Encroachment may take three different forms. For an opposition to be well founded in this respect, it is sufficient if only one of these forms is found to occur. In the present case, the Opposition Division has already concluded that the contested trade mark would take unfair advantage of the distinctive character or repute of the earlier trade mark. It follows that there is no need to examine whether other forms also apply.

5. Conclusion

Considering all the above, the opposition is well founded under Article 8(5) CTMR insofar as it is directed against the following goods:

Class 14: Clocks; Wristwatches; Electronic clocks and watches; Electric clocks and watches; Stopwatches; Dials (clock and watch making); Watch crystals; Automobile clocks; Watch chains; Watch cases; Parts for watches; Watch pouches; Table clocks; Necklaces (jewelry); Bracelets (jewelry); Key rings (trinkets or fobs) of precious metal; Wire of precious metal (jewelry); Rings (jewelry).

The opposition is not successful insofar as the remaining goods in Class 9 are concerned.

The opponent has also based its opposition under Article 8(5) CTMR on the following earlier trade marks:

• international trade mark registration designating Austria, Benelux, Bulgaria, the Czech Republic, Germany, Spain, France, Croatia, Hungary, Italy, Poland, Portugal, Romania, Slovenia and Slovakia No 614 932

for the figurative mark ;

• Community trade mark registration No 226 316 for the figurative mark .

Since these marks are less similar to the contested sign than the mark that has already been compared above, because they have additional figurative elements not contained in that mark, and since they cover the same or a narrower scope of goods in Class 14, the outcome cannot be different with respect to the remaining goods for which the opposition has already been rejected under Article 8(5) CTMR.

Given that the opposition is only partially successful under Article 8(5) CTMR, it is necessary to examine the remaining grounds and earlier rights on which the opposition was based insofar as it is directed against the goods for which the opposition is not successful under Article 8(5) CTMR.

The examination of the opposition will therefore continue for the remaining contested goods on the grounds of Article 8(1)(b) CTMR, also invoked by the opponent.

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.

The opposition is based on more than one earlier trade mark. For reasons of procedural economy, the Opposition Division will first examine the opposition in relation to earlier international trade mark registration designating the European Union No 1 134 259.

1. The goods

The goods on which the opposition is based are the following:

Class 9: Apparatus for recording, transmission and reproduction of sound or images; magnetic recording media, sound recording disks; compact disks, DVDs and other digital recording media; apparatus enabling the playing of compressed sound files (mp3); calculating machines and data processing equipment, software; games for mobile telephones, for computers and for digital personal stereos; electronic game software for mobile telephones, for computers and for digital personal stereos; computers, portable computers, digital personal stereos, mobile telephones and new-generation mobile telephones incorporating greater functionality (smartphones); apparatus for recording, transmission, reproduction of sound or images, particularly mobile telephones and new-generation mobile telephones incorporating greater functionality (smartphones); optical apparatus and instruments, particularly spectacles, sunglasses, magnifying glasses; batteries and cells for horological and chronometric instruments.

The (remaining) contested goods are the following:

Class 9: Mobile phones; Television receivers; Universal serial bus hardware drives; Monitors for computers; Laptop computers; Computers; Digital Versatile Disc players; Portable hard disk drives; Apparatus for recording, transmission or reproduction of sound or images; Computer application software; Audio Receivers; Network monitoring cameras namely for surveillance; Digital Signage; Colour printers; Tablet computers; Settop boxes; Scanners; Mouses for computers; Car speakers; Projectors.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘namely’, used in the applicant’s list of goods to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

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 9

The contested apparatus for recording, transmission or reproduction of sound or images; computers are identically contained in both lists of goods.

The contested laptop computers; tablet computers are included in the broad category of the opponent’s computers. Therefore, they are considered identical.

The contested computer application software is included in the broad category of the opponent’s software. Therefore, they are considered identical.

The contested mobile phones are identical to the opponent’s mobile telephones, albeit worded differently.

The contested television receivers; audio receivers; digital signage; settop boxes; car speakers; projectors are either included in or overlap with the opponent’s apparatus for recording, transmission or reproduction of sound or images. Therefore, they are identical.

The contested network monitoring cameras namely for surveillance are included in the broad category of the opponent’s apparatus for recording, transmission and reproduction of sound or images. Therefore, they are considered identical.

The contested universal serial bus hardware drives; monitors for computers; portable hard disk drives; colour printers; scanners; mouses for computers are similar to the opponent’s computers, because they are all computer peripheral devices and accessories and are complementary. These goods have the same nature, at least to some extent, as they are all goods to be used with computers. These goods may also be produced by the same companies and distributed through the same channels.

The contested digital versatile disc players are similar to the opponent’s DVDs and other digital recording media, as they can have the same producers, end users and distribution channels. Furthermore, they are complementary.

2. The signs

Earlier international trade mark registration designating the European Union No 1 134 259 for the word mark ‘SWATCH’ is identical to earlier Community trade mark registration No 226 019, which has already been compared with the contested sign under the grounds of Article 8(5) CTMR. Reference is made to those findings, which are equally valid for Article 8(1)(b) CTMR.

3. Distinctive and dominant elements of the signs

In determining the existence of likelihood of confusion, the comparison of the conflicting signs must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components.

The earlier mark has no element that could be clearly considered more distinctive than other elements.

The element ‘Watch’ of the contested sign will be associated with ‘to look at or observe closely or attentively’ by the English-speaking part of the public. As some of the relevant goods in Class 9 relate to looking at or observing something closely or attentively, it is considered that the element ‘Watch’ is weak for some of the goods, such as network monitoring cameras namely for surveillance. The part of the relevant public (the English-speaking public) that understands the meaning of this element will not pay as much attention to this element as to the other, more distinctive, element of the mark. Consequently, the impact of this element is limited when assessing the likelihood of confusion between the marks at issue and in relation to these goods. However, the distinctiveness of the earlier mark is normal for the remaining part of the public and, as far as the English-speaking part of the public is concerned, for the goods which do not relate to looking at or observing something closely or attentively.

The marks under comparison have no elements which could be considered clearly more dominant (visually eye‑catching) than other elements.

4. 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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’). The examination will proceed on the assumption that the earlier mark has enhanced distinctiveness.

5. 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.

In the present case, the goods found to be identical or similar are directed at both the public at large and business customers with specific professional knowledge or expertise. The level of attention will vary from average to higher than average, since some of the relevant goods are expensive items.

6. Global assessment, other arguments and conclusion

The goods are partly identical and partly similar.

The signs have in common the letters ‘WATCH’. However, they differ in their beginnings. The earlier mark begins with the letter ‘S’, whereas the contested sign begins with the letter ‘G’, which is separated by a space from the word ‘WATCH’. The signs have different structures, different numbers of syllables (one in the earlier mark and two in the contested sign) and begin with different sounds. They also have different rhythms and intonations.

The difference in the beginnings of the marks is also noticeable from the visual perspective. Consumers generally tend to focus on the beginning 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. Consequently, the different beginnings of the signs at issue have to be taken into account when assessing the likelihood of confusion between them.

For the English-speaking part of the public, the signs have different conceptual meanings. The differences between the signs, especially aurally and conceptually, are sufficient to offset the similarities between them. This part of the public will immediately perceive the differences between the marks.

For the non-English-speaking part of the public, neither of the marks as a whole has a meaning. This part of the public will perceive the earlier mark as a fanciful word, ‘SWATCH’. For this part of the public, the different letters at the beginnings of the signs (‘S’ versus ‘G’) and the different structures (one element versus two elements) will have a greater impact on the assessment of likelihood of confusion.

The differences located at the beginnings of the signs are therefore clearly perceptible and sufficiently striking to allow the relevant public to distinguish between them. Consumers are unlikely to assume that the goods provided under the contested sign and the goods provided under the earlier mark come from the same undertaking or economically linked undertakings.

The applicant refers to previous decisions of the Office to support its arguments. However, the signs considered in the current opposition and those involved in these previous decisions differ. In addition, each case must be judged on its own merits, having regard to all the relevant factors.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

Even assuming that the earlier mark enjoys an enhanced distinctiveness due to extensive use/reputation, the outcome of no likelihood of confusion remains the same. Therefore, it is not necessary to examine the evidence of extensive use/reputation.

The opponent has also based its opposition on the following earlier trade marks:

• international trade mark registration designating Austria, Benelux, Bulgaria, the Czech Republic, Germany, Spain, France, Croatia, Hungary, Italy, Poland, Portugal, Romania, Slovenia and Slovakia No 614 932

for the figurative mark .;

• Community trade mark registration No 226 316 for the figurative mark .

These marks are less similar to the contested sign than the mark that has already been compared above, because they contain additional figurative elements not contained in that mark. Furthermore, they cover the following goods:

International trade mark registration No 614 932

Class 14: Precious metals and their alloys and goods made thereof or coated therewith, jewellery, precious stones, horological and chronometric instruments.

Community trade mark registration No 226 316

Class 14: Precious metals and their alloys and goods in precious metals or coated therewith (excluding cutlery, forks and spoons); jewellery, precious stones, horological and chronometric instruments.

These goods are dissimilar to the contested goods in Class 9 because they do not have the same purpose, nature, producers or distribution channels. Therefore, the outcome cannot be different with respect to goods for which the opposition has already been rejected. No likelihood of confusion exists with respect to those goods.

Given that the opposition is not well founded under Article 8(1) CTMR, it is unnecessary to examine the evidence of use submitted by the opponent in relation to earlier Community trade mark registration No 226 316 and international trade mark registration designating Austria, Benelux, Bulgaria, the Czech Republic, Germany, Spain, France, Croatia, Hungary, Italy, Poland, Portugal, Romania, Slovenia and Slovakia No 614 932.

COSTS

According to Article 85(1) CTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) CTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division shall decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Justyna GBYL

Hasan Oguzhan KARSLI

Natascha GALPERIN

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.