OPPOSITION No B 2 492 026

BIBA GmbH, Daimlerstr. 3, 47167 Duisburg, Germany (opponent), represented by Jonas Rechtsanwaltsgesellschaft mbH, Hohenstaufenring 62, 50674 Cologne, Germany (professional representative)

a g a i n s t

Alexis, Via Gaeta 27, 00185 Rome, Italy (applicant).

On 02/02/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 492 026 is rejected in its entirety.

2. The opponent bears the costs.

REASONS:

The opponent filed an opposition against some of the goods of Community trade mark application No 13 292 909, namely against all the goods in Classes 14, 16 and 25. The opposition is based on, inter alia, Community trade mark registration No 5 997 853. The opponent invoked Article 8(1)(b) CTMR.

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

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

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s Community trade mark registration No 5 997 853.

1. The goods

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

Class 14: Jewellery; clocks.

Class 25: Clothing, footwear, headgear.

The contested goods are the following:

Class 14: Ornaments, made of or coated with precious or semi-precious metals or stones, or imitations thereof; trinkets of bronze; statues and figurines, made of or coated with precious or semi-precious metals or stones, or imitations thereof; key charms coated with precious metals; copper tokens; trinkets coated with precious metal; coins; ornaments [statues] made of precious metal; ornamental figurines made of precious metal; wire thread of precious metal; metal wire [precious metal]; precious and semi-precious gems; imitation precious stones; silver thread [jewellery, jewelry (am.)]; silver and its alloys; unwrought silver; silver, unwrought or beaten; semi-finished articles of precious metals for use in the manufacture of jewellery; semi-finished articles of precious stones for use in the manufacture of jewellery; jewellery; jewelry findings; rings [jewellery] made of non-precious metal; rings [jewellery, jewelry (am.)]; friendship rings; amulets; decorative articles [trinkets or jewellery] for personal use; costume jewellery; articles of jewellery with ornamental stones; jewellery made of plastics; pewter jewellery; jewellery containing gold; jewellery made from silver; articles of jewellery made from rope chain; clock cases; bracelets for watches; watchstraps; non-leather watch straps; watch pouches; watchstraps made of leather; watch straps of nylon; watch straps of synthetic material; watch straps of plastic; metal watch bands; watch straps made of metal or leather or plastic; pendants for watch chains; jewellery boxes and watch boxes; caskets for clocks and jewels; gemstones, pearls and precious metals, and imitations thereof; jewellery; time instruments.

Class 16: Adhesives for stationery or household purposes; adhesives for household purposes; adhesives for stationery; adhesives for art use; gummed tape [stationery]; adhesive packaging tapes; adhesive tapes for stationery or household purposes; self-adhesive tapes for stationery use; paper tapes; paper carton sealing tape; paper and cardboard; industrial paper and cardboard; paper; heat transfer paper; adhesive paper; letter paper [finished products]; fiber paper; wood pulp paper; fine paper; waterproof paper; gummed paper; glassine paper; waterproof paper [other than for use in building]; stationery and educational supplies; desk diaries; year planners; agendas; desk top planners; diaries; personal organisers; writing stationery; office paper stationery; stationery; gift stationery; office stationery; party stationery; office requisites; cases for stationery; decoration and art materials and media; arts, crafts and modelling equipment; money holders; disposable paper products; paper towels; drying towels of paper; face towels of paper; paper pennants; bibs of paper; table linen of paper; absorbent paper; hygienic paper; drawer liners of paper, perfumed or not; shelf paper; paper for use on examination tables; scented paper drawer liners; placards of paper; placards of paper or cardboard; tablemats of paper; paper doilies; table decorations of paper; decorations of cardboard for foodstuffs; tissues; tissues of paper; paper pillowcases; works of art and figurines of paper and cardboard, and architects’ models; paintings; drawings; graphic drawings; figurines [statuettes] of papier mâché; photo-engravings; pictures; lithographic engravings; paintings and calligraphic works; paintings [pictures], framed or unframed; portraits; sculptures made from papier mache; ornamental sculptures made of papier mache; silk screen prints; figurines made from paper; aquarelles; architectural models; bags and articles for packaging, wrapping and storage of paper, cardboard or plastics; cases made of corrugated cardboard; blister packs for packaging; carrier bags; bags of paper for roasting purposes; plastic bags for disposing of pet waste; paper shopping bags; hat boxes of cardboard; wrapping paper; gift wrap paper; decorative wrapping paper; lining papers for packaging; brown paper for wrapping; paper for wrapping and packaging; metallic gift wrapping paper; paper padding; paper gift tags; white paperboard; packing cardboard.

Class 25: Clothing of leather; menswear; clothing of imitations of leather; casualwear; clothing; caps with visors; sun hats; children’s headwear; leather headwear; headgear; footwear [excluding orthopedic footwear]; footwear for women; children’s footwear; flip-flops; espadrilles; tongues for shoes and boots; pumps [footwear]; footwear; rainsuits; roll necks [clothing]; leisurewear.

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. Therefore, these goods are considered identical.

Jewellery findings, notwithstanding a slightly different wording, are identical to the opponent’s jewellery.

The contested ornaments, made of or coated with precious or semi-precious metals or stones, or imitations thereof overlap with the opponent’s jewellery. Therefore, they are considered identical.

The contested time instruments include, as a broader category, the opponent’s clocks. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested trinkets of bronze; wire thread of precious metal; trinkets coated with precious metal; key charms coated with precious metals; jewellery boxes ; caskets for clocks and jewels ; rings [jewellery] made of non-precious metal; rings [jewellery, jewelry (am.)]; friendship rings; amulets; decorative articles [trinkets or jewellery] for personal use; costume jewellery; articles of jewellery with ornamental stones; jewellery made of plastics; pewter jewellery; jewellery containing gold; jewellery made from silver; articles of jewellery made from rope chain; silver thread [jewellery, jewelry (am.)]; pendants for watch chains are included in the broad category of the opponent’s jewellery. Therefore, they are identical.

The contested precious and semi-precious gems; imitation precious stones; gemstones, pearls and precious metals, and imitations thereof; semi-finished articles of precious stones for use in the manufacture of jewellery are raw materials and semi-processed goods commonly used in the manufacture of jewellery. The opponent’s jewellery comprises objects worn for personal adornment such as bracelets, rings, necklaces, etc. The reality of the market is such that the contested goods can be obtained in jewellery shops, as can the opponent’s goods, meaning that the goods have the same distribution channel, namely jewellery shops. Moreover, the abovementioned goods have the same relevant public, namely buyers of ornaments, and they may have the same producer. Therefore, these goods are similar.

The contested coins; copper tokens; ornaments [statues] made of precious metal; ornamental figurines made of precious metal; statues and figurines, made of or coated with precious or semi-precious metals or stones, or imitations thereof 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 at least similar to an average degree 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 boxes; clock cases; bracelets for watches; watchstraps; non-leather watch straps; watch pouches; watchstraps made of leather; watch straps of nylon; watch straps of synthetic material; watch straps of plastic; metal watch bands; watch straps made of metal or leather or plastic are items used to carry or protect timepieces or to fasten them around the wrist. The opponent’s clocks are devices for measuring time. These goods are complementary or often used in combination because the contested goods are made for fitting among them or to be used with timepieces. Moreover, they may have the same producer, the same distribution channels and the same relevant public, namely buyers of clocks. Therefore, these goods are similar.

The contested metal wire [precious metal]; silver and its alloys; unwrought silver; silver, unwrought or beaten; semi-finished articles of precious metals for use in the manufacture of jewellery are raw materials and semi-processed goods commonly used in the manufacture of jewellery. However, the mere fact that one good is used for the manufacture of another will not be sufficient in itself to show that the goods are similar; indeed, raw material is in general intended for use in industry rather than for direct purchase by the final consumer. In the case at issue, the contested goods’ nature, purpose, relevant public and distribution channels are distinct from those of the opponent’s goods in Classes 9 and 25. Therefore, they are considered dissimilar.

Contested goods in Class 16

The contested adhesives for stationery or household purposes; adhesives for household purposes; adhesives for stationery; adhesives for art use; gummed tape [stationery]; adhesive packaging tapes; adhesive tapes for stationery or household purposes; self-adhesive tapes for stationery use; paper tapes; paper carton sealing tape; paper and cardboard; industrial paper and cardboard; paper; heat transfer paper; adhesive paper; letter paper [finished products]; fiber paper; wood pulp paper; fine paper; waterproof paper; gummed paper; glassine paper; waterproof paper [other than for use in building]; stationery and educational supplies; desk diaries; year planners; agendas; desk top planners; diaries; personal organisers; writing stationery; office paper stationery; stationery; gift stationery; office stationery; party stationery; office requisites; cases for stationery; decoration and art materials and media; arts, crafts and modelling equipment; money holders; disposable paper products; paper towels; drying towels of paper; face towels of paper; paper pennants; bibs of paper; table linen of paper; absorbent paper; hygienic paper; drawer liners of paper, perfumed or not; shelf paper; paper for use on examination tables; scented paper drawer liners; placards of paper; placards of paper or cardboard; tablemats of paper; paper doilies; table decorations of paper; decorations of cardboard for foodstuffs; tissues; tissues of paper; paper pillowcases; works of art and figurines of paper and cardboard, and architects’ models; paintings; drawings; graphic drawings; figurines [statuettes] of papier mâché; photo-engravings; pictures; lithographic engravings; paintings and calligraphic works; paintings [pictures], framed or unframed; portraits; sculptures made from papier mache; ornamental sculptures made of papier mache; silk screen prints; figurines made from paper; aquarelles; architectural models; bags and articles for packaging, wrapping and storage of paper, cardboard or plastics; cases made of corrugated cardboard; blister packs for packaging; carrier bags; bags of paper for roasting purposes; plastic bags for disposing of pet waste; paper shopping bags; hat boxes of cardboard; wrapping paper; gift wrap paper; decorative wrapping paper; lining papers for packaging; brown paper for wrapping; paper for wrapping and packaging; metallic gift wrapping paper; paper padding; paper gift tags; white paperboard; packing cardboard are stationery, goods made of paper, ornaments, decorative items and packing materials. They do not have anything in common with the opponent’s goods in Classes 14 and 25, such as jewellery, clocks, clothing, footwear, headgear. This is because the goods at issue do not have the same nature, purpose, method of use or producer. Moreover, they are not complementary or in competition. Therefore, these goods are deemed dissimilar.

Contested goods in Class 25

Clothing; headgear; footwear are contained in both lists of goods. Therefore, they are identical.

The contested caps with visors; sun hats; children’s headwear; leather headwear are included in the broad category of the opponent’s headgear. Therefore, they are identical.

The contested pumps [footwear]; footwear for women; children’s footwear; flip-flops; espadrilles; footwear [excluding orthopedic footwear] are included in the broad category of the opponent’s footwear. Therefore, they are identical.

The contested clothing of leather; menswear; clothing of imitations of leather; casualwear; rainsuits; roll necks [clothing]; leisurewear are included in the broad category of the opponent’s clothing. Therefore, they are identical.

The contested tongues for shoes and boots are strips of leather or other material located under the laces of a shoe with the function of protecting the top of the foot and preventing the laces from rubbing against the foot. Consumers would not expect the contested goods to be manufactured by the same undertaking as the opponent’s goods in Classes 14, 16 and 25. Indeed, these goods differ in their nature and methods of use. Moreover, they do not commonly have the same distribution channels and generally target specialists such as cobblers and shoemakers. Therefore, they are considered dissimilar.

2. The signs

CRISCA
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The earlier trade mark is a word mark, ‘CRISCA’. The contested figurative sign is a circle containing a black and white depiction of an eye that is visible from the eyebrow to the cheekbone. This is capped by a silver-coloured crown with its circlet surmounted by ornaments; five arches are visible in the foreground while another two are in the background. A globe, surmounted by a cross, rests on top of the crown and two birds, with black backs and white chests and necks, sit to the left and right of it. At the bottom of the mark, partially superimposed on the cheekbone, are the words ‘Kris Na’ in a black italic typeface.

Visually, the signs are similar to the extent that they coincide in the second, third and fourth letters, ‘RIS’, of the earlier mark, ‘CRISCA’, and of the first word, ‘KRIS’, of the contested sign, ‘Kris Na’. Moreover, they coincide in the last letter, ‘A’, of the earlier mark, ‘CRISCA’, and of the second word, ‘NA’, of the contested sign, ‘Kris Na’. However, they differ in their first letters, ‘C’ of the earlier mark and ‘K’ of the first word, ‘KRIS’, of the contested sign. Moreover, they differ in the fifth letter, ‘C’, of the earlier mark and in the first letter, ‘N’, of the second word, ‘NA’, of the contested sign. In addition, the contested sign is composed of two words, namely ‘Kris’ and ‘Na’, both starting with an upper case letter, while the earlier mark contains only the word ‘CRISCA’. Finally, the signs differ visually in all the figurative elements of the contested sign.

Aurally, for a part of the relevant public, such as Italian-, Spanish- or Danish-speaking consumers, the signs are similar, since the letters ‘CRIS’ of the earlier mark, ‘CRISCA’, and the first word, ‘KRIS’, of the contested sign, ‘Kris Na’, are pronounced in the same manner, as their first letters, ‘C’ and ‘K’, have the same sound. Moreover, the signs are aurally similar in terms of the sound of the last letter, ‘A’, of the earlier mark and of the second word, ‘Na’, of the contested sign.

Conversely, for another part of the relevant public, such as Hungarian-speaking consumers, the marks differs in the pronunciation of their first letters, ‘C’ in the earlier mark and ‘K’ in the first word, ‘KRIS’, of the contested sign.

In addition, as the contested sign is composed of two words, it can reasonably be assumed that consumers will add a short pause between the words ‘Kris’ and ‘Na’, generating a moderate difference from the pronunciation of the earlier mark, which is only one word.

Conceptually, the public in the relevant territory will perceive the contested mark as containing the masculine and feminine name ‘Kris’ – which is given or at least understood as a name throughout the Community. In addition, the figurative elements will be associated with the concept of an eye, capped by a silver-coloured crown with its circlet surmounted by ornate arches, on top of which rests a globe surmounted by a cross and flanked by two birds, with black backs and white chests and necks, one on the left and the other on the right of it.

The other sign lacks any meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

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

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 marks under comparison have no elements which could be considered clearly more distinctive or 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.

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. 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 the public at large. The degree of attention may vary from average, for goods such as clothing or headgear, to high, for goods such as precious gems.

6. Global assessment, other arguments and conclusion

The goods are partly identical, partly similar and partly dissimilar.

The conflicting signs are visually and aurally similar. The earlier mark has a normal degree of inherent distinctiveness.

The signs are visually similar to the extent that the words ‘CRISCA’ and ‘Kris Na’ both contain the element ‘RIS’ and the last letter ‘A’. Aurally, for part of the public, the signs coincide in the sound of their first four letters, ‘CRIS’ in the earlier mark and ‘KRIS’ in the contested sign, as their first letters, ‘C’ and ‘K’, respectively, are pronounced identically. In addition, the signs are similar in the sound of their last letter, ‘A’.

It is true that the signs have some visual and aural similarities and that, for part of the public, the first four letters are pronounced identically in both signs. However, in this regard, while, in principle, the initial part of marks is more likely to capture the attention, that is not true in all cases, and it cannot, in any event, cast doubt on the principle that an examination of the similarity of trade marks must take into account the overall impression produced by them (26/06/2008, T‑79/07, Polaris, EU:T:2008:230, § 42). This is because the consumer normally perceives a trade mark as a whole and does not analyse its various details.

Therefore, these visual and aural identities are counterbalanced by other relevant factors. Firstly, the signs differ visually in their first letters, ‘C’ in the earlier mark and ‘K’ in the contested sign, and in their fifth letters, ‘C’ in the earlier mark and ‘N’ in the contested sign. Secondly, as stated in part b) of this decision, for a part of the public, the first letters, ‘C’ and ‘K’, of both signs are pronounced differently. Moreover, the contested sign comprises two words, namely ‘Kris’ and ‘Na’, while the earlier mark has only one word, namely ‘CRISCA’. This last factor creates a visual difference and moderate aural variation between the signs. Finally, the signs are conceptually dissimilar, since the contested sign includes the name ‘Kris’ and figurative elements to which meanings will be attributed, while the earlier mark has no meaning.

As described above, the contested figurative sign includes figurative elements that are not present in the earlier word mark. In this context, the Court has stated that, when evaluating the importance attached to the degree of visual, aural and conceptual similarity between the signs, it is appropriate to take into account the category of goods or services in question and the way they are marketed (22/09/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 27). The category of goods involved may increase the importance of one of the different aspects of similarity between signs (visual, phonetic and conceptual) because of the way in which goods are ordered and/or purchased. An aural or conceptual comparison between signs may be less important in the case of goods that are usually examined visually or may be tried on before being bought. In such cases, the visual impression of signs counts more in the assessment of likelihood of confusion. Generally, in clothes shops, customers can either choose the clothes they wish to buy themselves or be assisted by the sales staff. Whilst oral communication in respect of the product and the trade mark is not excluded, the choice of the item of clothing is generally made visually. Therefore, visual perception of the marks in question will generally take place prior to purchase. Accordingly, the visual aspect plays a greater role in the global assessment of the likelihood of confusion (14/10/2003, T‑292/01, Bass, EU:T:2003:264, § 55; 06/10/2004, T‑117/03 - T‑119/03 & T‑171/03, NL, EU:T:2004:293, § 50; 18/05/2011, T‑502/07, McKenzie, EU:T:2011:223, § 50; 24/01/2012, T‑593/10, B, EU:T:2012:25, § 47).

In the light of this reasoning, it may be assumed that, for some of the contested goods at issue, namely those in Class 25 – for which the mark’s visual aspect plays a greater role in the assessment of likelihood of confusion – the risk of likelihood of confusion is dispelled not only by the abovementioned aural and conceptual dissimilarities but also by the significant visual differences between the signs, namely all the figurative elements present only in the contested sign and the division into two words in the contested sign versus only one in the earlier mark.

Regarding the other part of the contested goods, namely those in Class 14 such as precious and semi-precious stones or jewellery, properly defining the degree of attention of the relevant public is necessary for the Office to make a judgment on whether or not there is a likelihood of confusion. In its decision of 09/12/2010, R 0900/2010-1, Leo Marco, § 22, the Board held that consumers generally put a certain amount of thought into the selection of these goods. In many cases the goods will be luxury items or will be intended as gifts. A relatively high degree of attention on the part of the consumer may be assumed. Therefore, as the degree of attention for these goods is high, it must be assumed that the abovementioned visual, aural and conceptual differences are enough to dispel the risk of likelihood of confusion. For other goods in Class 14, namely those that cannot be considered part of the category of valuables (e.g. clock cases), it shall be deemed that all the above mentioned visual, aural and conceptual differences are sufficient to avoid the risk that the public might believe that the goods in question come from the same undertaking or, as the case may be, from economically linked undertakings.

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

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

• German trade mark registration No 302 014 054 379 for the figurative mark

The above mentioned earlier mark invoked by the opponent is less similar to the contested mark. This is because the signs produce substantially different overall impressions. Indeed, not only are the signs different in all the figurative elements but they might be viewed by the public as visually and aurally dissimilar in terms of their word elements. Indeed, from the way in which the letters are combined, it is not obvious that the word reproduced is ‘CRISCA’ – which, as seen in part b) of this decision, has some similarities with the contested sign – or another word such as ‘CISARC’ or ‘IACSRC’ or ‘CIACRS’, which are different on all visual, aural and conceptual grounds from the word element, ‘Kris Na’, of the contested mark. Therefore, the outcome cannot be different with respect to goods, even if they are identical, for which the opposition has already been rejected on the basis of the opponent’s Community trade mark registration No 5 997 853 for the word mark ‘CRISCA’.

COSTS

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

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

According to Rule 94(3) and (7)(d)(ii) CTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein. In the present case the applicant did not appoint a professional representative within the meaning of Article 93 CTMR and therefore did not incur representation costs.

The Opposition Division

Andrea VALISA

Karin KUHL

Michele M. BENEDETTI-ALOISI

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.