OPPOSITION No B 2 446 352

David Webb LLC, 942 Madison Avenue, New York, NY 10021, United States of America (opponent), represented by Boyes Turner LLP, Abbots House, Abbey Street, Reading RG1 3BD, United Kingdom (professional representative)

a g a i n s t

Alishan Capital Incorporated, Mossfon Bldg., East 54th Street, Panama City, Panama (applicant), represented by Inlex IP Expertise, 37 rue d’Antibes, 06400 Cannes, France (professional representative).

On 05/10/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 446 352 is partially upheld, namely for the following contested goods:

Class 14: Jewellery, precious stones; horological and chronometric instruments; coins; works of art of precious metal; jewellery cases [caskets]; boxes of precious metal; watch straps, watch chains; key rings [trinkets or fobs]; medals.

2. European Union trade mark application No 13 123 013 is rejected for all the above goods. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 13 123 013. The opposition is based on the United Kingdom and Italian well-known mark ‘DAVID WEBB’. The opponent invoked Article 8(2)(c) EUTMR in conjunction with Article 8(1)(a) and (b) EUTMR.

EARLIER WELL-KNOWN MARK – ARTICLE 8(2)(c) EUTMR IN CONJUNCTION WITH ARTICLE 8(1)(a) and (b) EUTMR

The opponent states that the earlier trade mark, ‘DAVID WEBB’, is well known in the sense of Article 6bis of the Paris Convention in the United Kingdom and Italy for the following goods and services:

Class 14: Jewellery, watches, and works of art made of precious and semi-precious metals, stones and gems.

Class 35: Retail store services featuring jewellery, watches and works of art made of precious and semi-precious metals, stones and gems; On line retail store services featuring jewellery, watches and works of art made of precious and semi -precious metals, stones and gems. Repair, maintenance, and restoration of jewellery, watches and works of art made of precious and semi-precious metals, stones and gems.

The opponent invoked Article 8(1)(b) EUTMR in conjunction with Article 8(2)(c) EUTMR. According to Article 8(2)(c) EUTMR, for the purpose of paragraph 1, ‘earlier trade marks’ means:

trade marks which, on the date of application for registration of the European Union trade mark, or, where appropriate, of the priority claimed in respect of the application for registration of the European Union trade mark, are well known in a Member State, in the sense in which the words ‘well known’ are used in Article 6bis of the Paris Convention.

According to Article 6bis of the Paris Convention,

The countries of the Union undertake, ex officio if their legislation so permits, or at the request of an interested party, to refuse or to cancel the registration, and to prohibit the use, of a trade mark which constitutes a reproduction, an imitation, or a translation, liable to create confusion, of a mark considered by the competent authority of the country of registration or use to be well known in that country as being already the mark of a person entitled to the benefits of this Convention and used for identical or similar goods. These provisions shall also apply when the essential part of the mark constitutes a reproduction of any such well-known mark or an imitation liable to create confusion therewith.

Therefore, for Article 8(2)(c) EUTMR in conjunction with Article 8(1)(b) EUTMR to be applicable, it has to be established that:

(i) the earlier marks were well known in the relevant territories on the date when the contested EUTM application was filed or on the date when the European Union was designated in respect of the contested international registration; and

(ii) because of identity or similarity between the contested mark and the earlier well-known mark and identity or similarity between the goods or services covered by the trade marks, there is a likelihood of confusion on the part of the public in the relevant territory.

These conditions are cumulative. Therefore, where a mark does not satisfy one of these conditions, the opposition based on a well-known trade mark under Article 8(2)(c) EUTMR in conjunction with Article 8(1)(b) EUTMR cannot succeed.

It must be borne in mind that the degree of knowledge required must be considered to be reached when the earlier trade mark is known by a significant part of the public in a substantial part of the relevant territory.

Moreover, in determining whether the earlier mark is known by a significant part of the public, account must be taken not only of the degree of awareness of the mark, but also of any other factor relevant to the specific case. It follows that, in order to determine whether a mark is well known, 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.

In the present case, the opponent was required to prove that the trade mark on which the opposition is based was well known in the United Kingdom and Italy prior to the date of filing of the contested application, namely 29/07/2014.

On 08/12/2014, the opponent was given two months from the end of the cooling-off period to submit the abovementioned material. This time limit, following an extension, expired on 13/06/2015.

On 12/06/2015, within the time limit and in order to support the well-known character of its mark, the opponent submitted, inter alia, the following documents, which refer to the United Kingdom and Italy:

• An affidavit of Mark Emanuel, a managing partner of DAVID WEBB LLC, signed on 08/06/2015, which makes reference to the opponent’s activity, which began in 1948, its history and its success. The opponent had become famous by 1950 as a designer and manufacturer of fine jewellery and also won several awards in the 1960s for its jewellery. In the affidavit, it is stated that international female celebrities including Elizabeth Taylor and Jackie Kennedy wore the opponent’s pieces of jewellery, with the mark ‘DAVID WEBB’ becoming an iconic and successful brand of jewellery worldwide. The worldwide turnover figures from 2010 to 2014 are as follows:

2010: USD 2 082 100

2011: USD 12 627 200

2012: USD 13 133 80 (Italian wholesale = USD 521 700)

2013: USD 15 558 200 (Italian wholesale = USD 313 590)

2014: USD 17 081 10 (Italian wholesale = USD 30 250).

In the affidavit, it is also stated that the opponent does not mass produce jewellery, but manufactures a limited number of pieces of fine art jewellery that are highly fashionable and unique. To support these assertions, the following documents were attached:

• Extracts from the book DAVID WEBB: the Quintessential American Jeweler, which provide particulars of the most important achievements of DAVID WEBB in chronological order. Further extracts from the same book show the opponent’s jewellery creations being worn by famous actors and famous personalities.

• Various samples of magazine advertisements from the 1980s for the cosmetic brands Revlon and Estée Lauder featuring the opponent’s jewellery. Credits to the opponent’s jewellery are given at the bottom of the advertisements, although many of them are barely legible.

• Printouts from the website of the bookseller Assouline for the book DAVID WEBB: the Quintessential American Jeweler. Assouline is described as a luxury bookseller with stores around the world, including, as regards the relevant territories, London and Venice.

• Printouts in English from the websites of the retailers Waterstones, WHSmith and Amazon showing DAVID WEBB: the Quintessential American Jeweler for sale in the United Kingdom, with prices in pounds sterling.

• Printouts from the opponent’s website showing advertisements in magazines such as Vogue, Town & Country, Harper’s Bazaar, etc., displaying the opponent’s jewellery under the mark ‘DAVID WEBB’.

• Printouts from the opponent’s website showing a number of magazine covers and pictures showing international celebrities wearing the opponent’s jewellery. The jewellery is associated with the mark ‘DAVID WEBB’ and, from some of the pictures, it is possible to read the date (2015).

• The cover and extracts from the book Understanding Jewellery, published in London in 1989 and re-printed until 2014. The extracts show various pieces of jewellery under the mark ‘DAVID WEBB’.

• Printouts from the website www.net-a-porter.com featuring ‘DAVID WEBB’ jewellery for sale, dated 27/05/2015. The prices are shown in pounds sterling and range from GBP 2 000 to GBP 24 000. In these extracts, it is stated that Net-a-Porter is the ‘world’s premier online luxury fashion destination’.

• Printouts from the website of Sotheby’s showing sales in London and around the world of jewellery under the mark ‘DAVID WEBB’, from 2001 to 2014. According to this document, 17 pieces of ‘DAVID WEBB’ jewellery have been sold in London since 2001, for a total of GBP 172 225. It is further stated that, from 2001 to 2014, Sotheby’s sold 1 069 pieces of ‘DAVID WEBB’ jewellery around the world.

• An article from the newsletter ‘The jewellery editor’, dated 27/01/2014, stating that ‘DAVID WEBB jewellery do well in jewellery sales’.

• Extracts from the website www.thejewelleryeditor.com describing ‘DAVID WEBB’ jewellery as iconic jewels of the 1960s. ‘DAVID WEBB’ jewellery is listed as one of the highlights of the London ‘Masterpiece Fair 2013’, an exhibition that took place on 27/06/2013 in London.

• Printouts from the website of Hancocks showing a biography of DAVID WEBB, the jeweller who created the brand ‘DAVID WEBB’.

• Copies of 13 invoices showing sales of ‘DAVID WEBB’ jewellery to Veschetti (the distributor of ‘DAVID WEBB’ jewellery in Italy) in 2012 and 2013, for a value of USD 832 790. From the invoices, it is possible to see that the retail price of the articles of jewellery in question ranges from USD 28 000 to USD 135 000.

• An affidavit signed on 08/06/2015 by Victoria Lam, Director of Communications and Marketing in the opponent’s company since January 2015. In the affidavit, it is stated that, between 2009 and 2013, the marketing expenditure worldwide was USD 6.6 million. On an annual basis, the opponent spends around USD 1 2 million on media buys, around USD 100 000 on catalogue printing, shipping and production, and over USD 500 000 on advertising campaigns launched by the New York branding agency Laird+Partners. In this document, it is also stated that the marketing budget includes attendance at exhibitions such as the ‘Masterpiece Fair’ in London in 2013 and at the ‘Doha Jewellery & Watches Exhibition’. In particular, in 2013, the opponent spent USD 100 000 on attendance at the ‘Masterpiece Fair’ in London. In support of this affidavit, the following documents were attached:

• A large number of printouts from the opponent’s Twitter, Facebook and Instagram accounts showing the opponent’s products alone or worn by international celebrities. The pictures of the opponent’s products posted on Instagram from April to July 2014 each received several hundred ‘likes’.

• A document of unknown origin showing the opponent’s website traffic. This document shows that, in November 2014, there were 277 visits to the website from the United Kingdom. Furthermore, although the year is not specified, the document also shows 220 visits to the website from the United Kingdom that, according to the opponent, happened in January 2015. The United Kingdom ranks the third highest country in terms of visits to the opponent’s website.

• Copies of press coverage and photographs from 2011 to 2015 showing a number of celebrities wearing the opponent’s jewellery under the mark ‘DAVID WEBB’. The images in question appeared in the online versions of the British media outlets the Daily Mail, Hello! magazine, the Mirror, the Metro, The Telegraph, ITV news and The Guardian; in the paper versions of the magazines Harper’s Bazaar and Town & Country; and on the website www.amazon.co.uk and on that of international singer Beyoncé, www.beyonce.com.

• Extracts from Vogue Italia magazine, dated March 2013, March 2014 and December 2014, in which advertisements and promotions for ‘DAVID WEBB’ jewellery appear, and further extracts from Vanity Fair magazine, published in the United Kingdom in August 2013, concerning the opponent’s jewellery, reporting its history, development and popularity.

• An affidavit dated 29/05/2015, signed by David Bennett, Worldwide Chairman of Jewellery at Sotheby’s, Co-Chairman of Sotheby’s Switzerland and Deputy Chairman of Sotheby’s Europe. In the affidavit, it is stated that, according to Sotheby’s database, 30 pieces of ‘DAVID WEBB’ jewellery have been offered for sale in London since 2000, with a total value of GBP 183 905. During the same time, Sotheby’s offered for sale 187 pieces of ‘DAVID WEBB’ jewellery in Geneva and 1 050 pieces in New York. In the affidavit, reference is made to a book entitled Understanding Jewellery written by David Bennett and Daniela Mascetti and first published in 1989 in London and revised in 1994 and 2003. The book includes several references to ‘DAVID WEBB’ jewellery and six pictures of this jewellery.

• An affidavit dated 08/06/2015 and signed by Rahul Kadakia, International Head of Jewellery at Christie’s since 2014 and formerly Head of Christie’s New York Jewellery Department from 2004 to 2014. In this affidavit, it is stated that ‘DAVID WEBB’ jewellery has been very popular and highly sought after around the world, including in the United Kingdom and Italy. The affidavit also includes the following information:

• A list of auction lots of ‘DAVID WEBB’ jewellery from 1970 to 29/07/2014, which shows images of jewellery bearing the mark ‘DAVID WEBB’, sold by Christie’s around the world. Seven pieces of the opponent’s jewellery were sold in the United Kingdom.

• A printout of past sales of ‘DAVID WEBB’ jewellery through auctions in Milan and Rome between 2003 and 2012. In particular, 21 pieces of ‘DAVID WEBB’ jewellery were sold in Rome and Milan in this period, with realised prices ranging between EUR 2 000 and EUR 22 000, approximately.

• An image of a piece of ‘DAVID WEBB’ jewellery that Christie’s sold in the United Kingdom on 17/07/2014 for GBP 30 000.

• A witness statement signed on 22/05/2015 by Laura Veschetti, who worked in her father’s business, Veschetti Gioielli s.r.l., for 27 years. In the statement, it is affirmed that Veschetti has been the exclusive distributor for ‘DAVID WEBB’ jewellery since 2010, with the other brands sold by this retailer including Rolex, Chopard, Hermes, etc., that is to say brands of expensive and high-end jewellery and watches. The following documents were attached to the witness statement:

• Extracts from the website www.veschetti.com showing images of jewellery and a description of the brands sold, among which is ‘DAVID WEBB’. Moreover, an image of the opponent’s mark ‘DAVID WEBB’, written in grey characters against a black background, with the small words ‘New York’ underneath it.

• A witness statement signed on 22/04/2015 by Alexandra Reece, Operations Manager at Masterpiece Fair, who had been in post for nine months on the date of the statement, and whose role involves dealing with anything related to the logistics, budgeting and smooth running of the team and the delivery of the Masterpiece London Art Fair. The fair is described as the leading international cross-collecting fair for art, antiques and design. According to the statement, 34 000 people attended the fair in 2013, mostly dealers and private individuals interested in purchasing pieces from the fair. The following document was attached to the witness statement:

• A copy of the Masterpiece London 2013 magazine, which includes a full-page advertisement for ‘DAVID WEBB’ jewellery. It also shows the stand that the opponent had in the exhibition.

The Opposition Division notes that, as far as the affidavits and witness statements are concerned, Rule 22(4) EUTMIR expressly mentions written statements referred to in Article 78(1)(f) EUTMR as admissible means of proof of use. Article 78(1)(f) EUTMR lists means of giving evidence, amongst which are sworn or affirmed written statements or other statements that have a similar effect according to the law of the State in which they have been drawn up. These rules can also be applied by analogy to the assessment of well-known character.

As far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perception of the party involved may be affected to a greater or lesser degree by their personal interests in the matter. However, this does not mean that such statements do not have any probative value at all. The final outcome depends on the overall assessment of the evidence in the particular case. In general, further evidence is necessary to establish use, since such statements have to be considered as having less probative value than physical evidence (labels, packaging, etc.) or evidence originating from independent sources. Therefore, it is necessary to assess the remaining evidence to see whether or not the contents of the declaration are supported by the other items of evidence.

The opponent has submitted, inter alia, numerous advertisements and extracts from media outlets in the United Kingdom and, although to a lesser extent, Italy and extracts from a few books referring to the mark ‘DAVID WEBB’ in the period at least up until 29/07/2014. The invoices and the internet extracts showing the presence of the opponent’s products under the mark ‘DAVID WEBB’ on the websites of high-end goods retailers such as Sotheby’s and Christie’s show to a sufficient extent that the pieces of jewellery have been made available to the public in the United Kingdom and Italy up until the relevant point in time. Furthermore, the low numbers of products sold, both in Italy and in the United Kingdom, are largely justified by the specific type of articles in question, that is, articles of fine jewellery with remarkably high prices.

Given the large number of examples submitted relating to various time periods, it is reasonable to surmise that the relevant consumers in the United Kingdom and Italy have encountered the mark ‘DAVID WEBB’ at least up until 29/07/2014 and, therefore, the intensity and duration of the use of the mark is proven.

There is no doubt that the well-known character of the opponent’s sign ‘DAVID WEBB’ extends to the United Kingdom and Italy in the area of jewellery, which defines the geographical extent of use of the mark.

Finally, the various witness statements with their supporting documents as listed above, including advertisements featuring international celebrities in various magazines and newspapers, provide the Opposition Division with sufficient information concerning the market share held by the trade mark, and the size of the investment made by the opponent in promoting it.

Therefore, the documents submitted provide proof of 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.

It is worth noting that the mere fact that the opponent’s mark appears in some of the evidence together with the words ‘New York’ does not affect the distinctiveness of the earlier mark, since the words ‘New York’ will simply be understood as a reference to the place where the opponent’s company is based.

In conclusion, the Opposition Division finds that the evidence filed demonstrates that the earlier mark, ‘DAVID WEBB’, was well known by the relevant sector of the public within the relevant period of time in the United Kingdom and Italy.

However, this conclusion does not extend to all the goods and services for which the opponent claims its mark to be well known. Indeed, no evidence has been submitted in relation to the following goods: watches and works of art made of precious and semi-precious metals, stones and gems in Class 14.

Furthermore, no convincing evidence has been filed in respect to the services in Class 35: retail store services featuring jewellery, watches and works of art made of precious and semi-precious metals, stones and gems; on line retail store services featuring jewellery, watches and works of art made of precious and semi -precious metals, stones and gems; repair, maintenance, and restoration of jewellery, watches and works of art made of precious and semi-precious metals, stones and gems in Class 35.

In this respect, the opponent has proven the manufacturing of pieces of jewellery and precious stones, but has not also proven the related retail services, which apparently were carried out by other undertakings, as, for instance, in the case of Veschetti, which is the distributor of ‘DAVID WEBB’ jewellery in Italy, and Sotheby’s and Christie’s, which are the entities in charge of selling the opponent’s goods in the United Kingdom and all around the world.

It is concluded that the mark ‘DAVID WEBB’ is considered to be well known in the United Kingdom and Italy in relation to jewellery in Class 14.

DOUBLE IDENTITY – ARTICLE 8(1)(a) EUTMR – AND LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

Article 8(1)(a) EUTMR provides that, upon opposition by the proprietor of an earlier trade mark within the meaning of Article 8(2) EUTMR, a EUTM application shall not be registered if it is identical with the earlier trade mark and the goods or services for which registration is applied for are identical with the goods or services for which the earlier trade mark is protected.

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 goods and services

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

Class 14: Jewellery.

The contested goods and services are the following:

Class 14: Jewellery, precious stones; horological and chronometric instruments; alloys of precious metal; coins; works of art of precious metal; jewellery cases [caskets]; boxes of precious metal; watch cases, watch straps, watch chains, watch springs or watch glasses; key rings [trinkets or fobs]; cases for watches; medals.

Class 35: Business management; retailing; business administration; business management and organization consultancy; organisation of exhibitions for commercial or advertising purposes; public relations services.

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

Jewellery is identically contained in both lists of goods.

The contested horological and chronometric instruments are similar to a high degree to the opponent’s goods, since they have the same nature. They can also coincide in their producer, target public and distribution channels.

The contested works of art of precious metal; jewellery cases [caskets]; boxes of precious metal are considered similar to the opponent’s jewellery, as they can coincide in their producer, end user and distribution channels. Furthermore, they are complementary.

The contested precious stones are similar to the opponent’s goods, since they can coincide in their manufacturer, are intended for the same public and are sold through the same retail shops.

The contested key rings [trinkets or fobs] are similar to the opponent’s jewellery. They can be decorative items used for personal adornment; therefore, they have the same purpose and they target the same end users. Furthermore, they can be manufactured by the same producers and found at the same points of sale.

The contested coins; medals are valuable goods that might be used for ornamental, investment or collection purposes. The opponent’s jewellery – although it can be used for the same purpose as listed above – has the main purpose of personal adornment. Therefore, the opponent’s goods shall be deemed to be at least similar to the contested goods to the extent that they have the same distribution channels (such as jewellery shops), producers and relevant public, namely purchasers of valuables.

The contested watch straps, watch chains are similar to a low degree to the opponent’s jewellery, as they can coincide in their producer, end user and distribution channels.

Finally, as regards the contested alloys of precious metal; watch cases, watch springs or watch glasses; cases for watches, these are considered dissimilar to the opponent’s goods. In particular, alloys of precious metal are the raw materials that, inter alia, the opponent’s goods in Class 14 are made of. However, the mere fact that one good is used for the manufacture of another is not sufficient in itself to show that the goods are similar, as their nature, purpose and customers may be quite distinct. Raw materials are intended for use in industry rather than for direct purchase by the final consumer. The producers are normally different and the goods are sold through different channels. Furthermore, the applicant’s goods target industrial operators, whereas the opponent’s goods are intended for end users. As regards the other contested goods, namely watch cases, watch springs or watch glasses; cases for watches, these have different natures, purposes and methods of use from those of the opponent’s jewellery. Furthermore, they have different origins and are intended for different consumers. It follows that these goods are dissimilar.

Contested services in Class 35

The contested services and the opponent’s jewellery have different natures and purposes, target different publics and are normally rendered by different companies. Furthermore, they are not in competition or complementary, that is, one is not indispensable or important for the other.

In particular, as regards the contested retailing, it is noted that retail services in general (i.e. not limited in the specification to the sale of particular goods) are not similar to any goods that can be sold at retail (see Communication No 7/05 of the President of the Office of 31/10/2005 concerning the registration of European Union trade marks for retail services). Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different goods, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, goods and services have different methods of use and are neither in competition nor necessarily complementary.

Therefore, the contested services and the opponent’s goods are deemed to be dissimilar overall.

2. The signs

DAVID WEBB	DAVID WEBB
Earlier trade mark	Contested sign

The signs are identical.

3. Global assessment, other arguments and conclusion

The goods and services are partly identical, partly similar (to various degrees) and partly dissimilar. The signs are identical.

The signs were found to be identical and some of the contested goods, namely jewellery, are identical. Therefore, the opposition must be upheld pursuant to Article 8(1)(a) in conjunction with Article 8(2)(c) EUTMR for these goods.

Article 8(1)(b) EUTMR states that the mark applied for shall not be registered, ‘if because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark’.

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

In the present case, in relation to the contested goods that are similar to the opponent’s goods, namely precious stones; coins; works of art of precious metal; jewellery cases [caskets]; boxes of precious metal; key rings [trinkets or fobs]; medals, and those that are highly similar to the opponent’s goods, namely horological and chronometric instruments, given the identity between the signs, there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR.

In relation to the contested goods that are similar to a low degree to the opponent’s goods, namely watch straps, watch chains, although they are very specific parts for watches, they have some important factors in common with the opponent’s goods. The public might believe that the goods in question come from the same undertaking or from economically linked undertakings. Moreover, the low degree of similarity between the contested goods and the opponent’s goods is not enough to exclude a likelihood of confusion, since the marks are identical.

Therefore, given the identity of the signs, there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR and the opposition must be upheld for the goods found to be similar to a low degree.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s well-known trade mark.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to various degrees to those of the earlier trade mark.

The rest of the contested goods, namely alloys of precious metal; watch cases, watch springs or watch glasses; cases for watches, are dissimilar to the opponent’s goods. As the 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 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, 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 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

Isabel DE ALFONSETI HARTMANN

Claudia ATTINÀ

Ana MUÑIZ RODRÍGUEZ

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 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 720 has been paid.