OPPOSITION No B 2 456 765

Macchina CP5, S.L., C/Cabestany, 14, 08014 Barcelona, Spain (opponent), represented by Durán - Corretjer, S.L.P., Còrsega, 329 (Pº de Gracia/Diagonal), 08037 Barcelona, Spain (professional representative)

a g a i n s t

Zuccolo Rochet France, Parc Altaïs, 6 rue Saturne, 74650 Chavanod, France (applicant), represented by Casalonga Alicante, S.L., Avenida Maisonnave 41-6C, 03003 Alicante, Spain (professional representative).

On 10/06/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 456 765 is upheld for all the contested goods.

2. European Union trade mark application No 13 247 515 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 13 247 515. The opposition is based on Spanish trade mark registration No 2 892 874. The opponent invoked Article 8(1)(b) EUTMR.

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

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

1. The goods

The goods on which the opposition is based are 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.

The contested goods are the following:

Class 14: Watch straps, in particular straps with a foldaway clasp system.

The term ‘in particular’, used in the applicant’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 14

The contested watch straps, in particular straps with a foldaway clasp system are similar to the opponent’s horological and chronometric instruments because they can coincide in producer and relevant consumer. Furthermore they are complementary.

2. 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 similar are directed at the public at large. The degree of attention is average.

The applicant claims that the degree of attention of the public will be high because its goods are expensive as they are sold on the market for EUR 2500-3500. In this context the Opposition Division notes that its task is to assess the degree of attention of the public in relation to the contested goods according to their exact specification in the list of goods and not in relation to the specific goods for which the applicant effectively uses the mark. As watch straps are relatively common consumer products usually falling in a medium price range, the degree of attention has been established as average and not high.

3. The signs

	CPS
Earlier trade mark	Contested sign

The relevant territory is Spain.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The earlier mark is a figurative mark consisting of a sequence of three stylised letters/numbers. Due to the particular stylisation of the second and third letter/number, these are difficult to read, and the whole earlier mark will be perceived as ‘CPS’ by a significant part of the public and as ‘CP5’ (or ‘C75‘) by the remaining part of the public.

In this context the Opposition Division notes that if a significant part of the relevant public for the goods at issue may be confused as to the origin of the goods, this will be sufficient to establish a likelihood of confusion. It is not necessary to establish that all actual or potential consumers of the relevant goods are likely to be confused. Consequently, for reasons of procedural economy the comparison of the marks will focus on the part of the public that perceive the earlier trade mark as ‘CPS’.

The contested sign is the word mark ‘CPS’.

Since both marks are composed of only one element, they have no elements that could be considered clearly more distinctive or more dominant (visually eye-catching) than other elements. The distinctiveness of the earlier trade mark and of the contested sign is average because the marks have no meaning in respect of the relevant goods in Class 14 for the relevant public.

Visually, the signs coincide in ‘CPS’. However, they differ in the stylisation of the earlier trade mark.

Therefore, the signs are highly similar.

Aurally, the pronunciation of the signs fully coincides in the sound of the letters ‛CPS’. The marks are aurally identical.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

The applicant argues that the acronym ‘CPS’ in the contested trade mark means ‘Crown Protection System’. The applicant submitted its product catalogue in French mentioning the mark ‘CPS’ and explaining the ‘Crown Protection System’ used in the straps of the applicant’s watches. The Opposition Division observes that the relevant Spanish consumer will perceive the contested sign ‘CPS’ as a meaningless acronym. The French catalogue referring to a relatively complex English term ‘Crown Protection System’ clearly does not prove that the relevant consumers in Spain are acquainted with the specific meaning of ‘CPS’ used by the applicant on the market.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

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.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The goods are similar. The earlier trade mark’s degree of distinctiveness is average. The degree of attention of the relevant public is also average.

As mentioned in section c) above, a significant part of the public will perceive the earlier trade mark as ‘CPS’. For this part of the public, the marks are visually similar to a high degree and aurally identical and, furthermore, there is nothing to link or differentiate the marks conceptually. Consequently, the overall impressions created by the marks are highly similar for this part of the public.

The applicant argues that the letters ‘CP’ in the earlier trade mark may be understood as ‘constant power’, that there are a number of trade mark registrations containing the letters ‘CP’ for goods in Class 14 and refers to a number of previous decisions of the EUIPO finding no likelihood of confusion between three-letter marks where one letter was different. Since a significant part of the public will perceive the earlier trade mark as ‘CPS’ and not as ‘CP5’, these arguments are irrelevant for this part of the public.

Considering all the above, there is a likelihood of confusion on the part of the public.

The Opposition Division reiterates that it is sufficient for establishing likelihood of confusion if only a significant part of the relevant public may be confused as to the origin of the goods. It is not necessary to establish that all consumers of the relevant goods are likely to be confused.

Therefore, the opposition is well founded on the basis of the opponent’s Spanish trade mark registration No 2 892 874. It follows that the contested trade mark must be rejected for all the contested goods.

COSTS

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

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

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Anna ZIOLKOWSKA

Vít MAHELKA

Lucinda CARNEY

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.

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) EUTMIR, 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 (Annex I A(33) EUTMR) has been paid.