DECISION

of the First Board of Appeal

of 5 October 2016

In Case R 439/2016-1

BIBA GmbH

Daimlerstr. 3

47167 Duisburg

Germany

Opponent / Appellant

represented by JONAS RECHTSANWALTSGESELLSCHAFT MBH, Hohenstaufenring 62, 50674 Köln, Germany

Alexis s.r.l.

Via Gaeta 27

00185 Roma

Italy

Applicant / Respondent

APPEAL relating to Opposition Proceedings No B 2 492 026 (European Union trade mark application No 13 292 909)

The First Board of Appeal

composed of Th. M. Margellos (Chairperson), Ph. von Kapff (Rapporteur) and M. Bra (Member)

Registrar: H. Dijkema

gives the following

Decision

Summary of the facts

By an application filed on 23 September 2014, Alexis s.r.l. (‘the applicant’) sought to register the figurative entirely

for the following list of goods:

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 mâché; Ornamental sculptures made of papier mâché; 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 20 - Furniture and furnishings; Clothes hangers and clothes hooks; Frames; Beds, bedding, mattresses, pillows and cushions; Mirrors (silvered glass); Bathroom fittings in the nature of furniture; Furniture fittings, not of metal; Clothes stands; Clothes racks [furniture]; Blinds, and fittings for curtains and blinds; Containers, and closures and holders therefor; Closures for containers; Cylindrical cans, not of metal; Frames (Picture -) of non-metallic materials; Frames (Picture -) of metal; Leather picture frames; Photograph frames; Photograph frames of metal; Frames for display boards; Holders for photographs [frames]; Frameless picture holders; Framed stands; Brackets (Non-metallic -) for frames; Cabinets for display purposes; Shop display fittings, (Non-metallic -); Display fittings [furniture] of metal; Display counters [non-electric]; Placards of wood or plastics; Advertising display boards; Advertisement display boards of wood [non-luminous]; Advertisement display boards of plastic [non-luminous]; Advertisement display boards of glass [non-luminous]; Holders for brochures [in the nature of furniture]; Holders for display material [furniture]; Displays, stands and signage; Statues, figurines, works of art and ornaments and decorations, made of materials such as wood, wax, plaster or plastic, included in the class; Dreamcatchers [decoration]; Busts of wood; Busts of wood, wax, plaster or plastic; Busts of plastic; Wind chimes; Table centres [ornaments] made of wood; Mobiles [decoration]; Adhesive wall decorations of wood; Table decorations of plastic; Action figures (Decorative -) of plastic; Plastic models for decoration;

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 application was published on 12 December 2014.
On 12 March 2015, BIBA GmbH (‘the opponent’) filed an opposition against the registration of the published trade mark application for entirely goods, namely:

The grounds of opposition were those laid down in Article 8(1)(b) EUTMR (a likelihood of confusion).

The opposition was based on the following earlier rights:

A. word mark

CRISCA

registered as European Union trade mark No 5 997 853 with a filing date of 5 June 2007 and a registration date of 20 May 2008 for part of the goods protected, namely:

Class 14 - Jewellery; clocks;

Class 25 - Clothing, footwear, headgear.

B. figurative mark

registered in Germany under No 30 2014 054 379 with a filing date of 30 July 2014 and a registration date of 16 September 2014 for part of the goods and services protected, namely:

Class 14 - Precious stones; pearls and precious metals and imitations thereof; jewellery; costume jewellery; horological instruments; chronometric instruments; chronometric apparatus; key rings [jewellery or key fobs]; jewellery cases; pins [jewellery]; key chains [fantasy, jewellery]; cuff links; tie clips;

Class 16 - Printed matter, in particular customer magazines and newsletters; non-encoded identification, service, store and paying cards made of plastics; voucher and tokens made of paper, cardboard or plastics;

Class 25 - Clothing; footwear; headgear; outerwear for women; outerwear for men; outerwear for children; sportswear; underwear; lingerie for women, corsetry articles [clothing]; belts; sport shoes; garments, also of leather, leather imitations or fur; swimwear; pockets for clothing; scarfs; shawls; ties; parts and accessories for the aforementioned goods, as far as included in this class;

Class 35 - Retail services in relation to precious stones, pearls and precious metals and imitations thereof, jewellery, costume jewellery, horological instruments, chronometric instruments, chronometric apparatus, key rings [jewellery or key fobs], jewellery cases, pins [jewellery], key chains [fantasy, jewellery], cuff links, tie clips, clothing, footwear, headgear, outerwear for women, outerwear for men, outerwear for children, sportswear, underwear, lingerie for women, corsetry articles [clothing], belts, sport shoes, garments, also of leather, leather imitations or fur, swimwear, pockets for clothing, scarfs, shawls, ties, parts and accessories for the aforementioned goods.

By decision of 2 February 2016 (‘the contested decision’), the Opposition Division rejected the entirely on the grounds that there was no likelihood of confusion. It gave, in particular, the following grounds for its decision:

The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark No 5 997 853 ‘CRISCA’.
The contested ‘jewellery, jewellery findings, ornaments, made of or coated with precious or semi-precious metals or stones, or imitations thereof, time instruments, 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’ in Class 14 and the contested ‘clothing, headgear, footwear, caps with visors, sun hats, children’s headwear, leather headwear, pumps [footwear], footwear for women, children’s footwear, flip-flops, espadrilles, footwear [excluding orthopaedic footwear], clothing of leather, menswear, clothing of imitations of leather, casualwear, rainsuits, roll necks [clothing], leisurewear’ in Class 25 are identical to the opponent’s goods.
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; 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; 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’ in Class 14 are similar to the opponent’s goods.
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’ in Class 14, 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 mâché; ornamental sculptures made of papier mâché; 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’ in Class 16 and the contested ‘tongues for shoes and boots’ in Class 25 are dissimilar to the opponent’s goods.
Visually, the signs are similar to the extent that they coincide in the second, third and fourth letter, i.e. ‘RIS’. 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’. Conversely, for another part of the relevant public, such as Hungarian-speaking consumers, the marks differ 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 with regard to 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 European Union. 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. The earlier sign lacks any meaning in the European Union. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.
The marks under comparison have no elements which could be considered clearly more distinctive or dominant than other elements.
The distinctiveness of the earlier mark must be seen as normal.
The goods at issue are directed at the public at large. The degree of attention varies from average (for goods such as clothing or headgear) to high (for goods such as precious gems).
It is true that the signs have some visual and aural similarities. However, these visual and aural similarities 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 their fifth letters, ‘C’ in the earlier mark and ‘N’ in the contested sign. Secondly, for a part of the public the first letters, ‘C’ and ‘K’, are pronounced differently. Moreover, the contested sign comprises two words, namely ‘Kris’ and ‘Na’, while the earlier mark has only one word. This last factor creates a visual difference and moderate aural variation between the signs. Finally, the signs are conceptually dissimilar.
The contested figurative sign includes figurative elements that are not present in the earlier word mark. In the case at hand, the visual aspects play a greater role in the global assessment of the likelihood of confusion due to the nature of the goods in Class 25.
Regarding the other part of the contested goods, namely those in Class 14 such as precious and semi-precious stones or jewellery, a relatively high degree of attention on the part of the consumers may be assumed. Therefore, as the degree of attention for these goods is high, the mentioned visual, aural and conceptual differences are enough to dispel any risk of a likelihood of confusion. For the other goods in Class 14, namely those that cannot be considered part of the category of valuables, it shall be deemed that all the abovementioned 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. In sum, there is no likelihood of confusion.
There is also no likelihood of confusion in so far as the opposition is based on earlier German trade mark No 30 2014 054 379 . This mark is less similar to the contested mark than earlier European Union trade mark No 5 997 853. This is because earlier German trade mark No 30 2014 054 379 and the contested mark 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. From the way in which the letters are combined in the earlier sign, it is not obvious that the word reproduced is ‘CRISCA’. Therefore, the outcome cannot be different even assuming that all goods applied for are identical to the opponent’s goods.

On 4 March 2016, the opponent filed an appeal against the contested decision, requesting that the decision be entirely set aside. The arguments raised in the statement of grounds of the appeal received on 30 May 2016 may be summarised as follows:

The Opposition Division wrongly denied a likelihood of confusion in spite of the confirmed visual and aural similarities between the trade marks in conflict and the confirmed identity and similarity between most of the goods in conflict.
The Opposition Division overestimated the aspect that, with regard to clothing etc. the visual aspect may play a greater role in the assessment of a likelihood of confusion. The Opposition Division wrongly disregarded the high aural similarity between the word elements ‘CRISCA’ and ‘Kris Na’.
Furthermore, it has to be considered that with respect to clothing, the public is familiar with the fact that trade marks are used in different graphic ways because of modernized labels, labels for special seasons etc. and therefore pays more attention to the word elements and the aural similarity.
The graphic device is not sufficient to exclude a likelihood of confusion, all the more considering that the public does not spend a high degree of attention on graphic devices on clothing labels because they are often changed, modernized or adapted to special seasons etc. Therefore, the public pays more attention to the word element ‘Kris Na’ of the contested mark which is aurally very similar to ‘CRISCA’ of the earlier mark.
The Opposition Division wrongly denied a likelihood of confusion with regard to the goods in Class 14 by arguing that a relatively high degree of attention on the part of the consumers may be assumed for valuables and that for the rest of the goods that cannot be considered as valuables the visual, aural and conceptual differences are sufficient to exclude a likelihood of confusion. Once again, the Opposition Division did not sufficiently consider the high degree of aural similarity and the average degree of visual similarity.
The fact that the letters ‘K’ and ‘C’ are pronounced differently in some European languages is irrelevant since a substantial part of the public will pronounce them identically.
There is also a likelihood of confusion with regard to the earlier German trade mark . Contrary to the Opposition Division’s view, relevant parts of the German public will pronounce the earlier sign as ‘CRISCA’. Because of the arrangement of the letters in the logo from left to right, the public will not recognize words other than ‘CRISCA’ such as ‘CISARC’ or ‘IRCSAC’.

No observations in reply were filed.

Reasons

The appeal complies with Articles 58, 59 and 60(1) EUTMR and Rules 48 and 49 CTMIR. It is, therefore, admissible. However, the appeal is not well founded since the Opposition Division correctly denied that a likelihood of confusion existed.

Earlier European Union trade mark ‘CRISCA’

Article 8(1)(b) EUTMR

According to Article 8(1)(b) EUTMR, the trade mark applied for shall not be registered if, because of its identity with, or similarity to, an earlier trademark, and the identity or similarity of the goods or services covered by the two trademarks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected.
The risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion within the meaning of that Article (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 16-18; 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 30).
A likelihood of confusion must be assessed globally, taking into account all factors relevant to the circumstances of the case (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 16; 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18).
The global appreciation 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; 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 25).

Relevant public

The average consumer is deemed to be reasonably well-informed and reasonably observant and circumspect (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 17-26). It should, however, be recalled that the average consumer’s level of attention is likely to vary according to the category of goods and services in question (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 42 and the case-law cited therein) and that the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his/her trust in the imperfect picture of them that he/she has kept in his/her mind (22/06/1999, C‑342/97, Lloyed Schuhfabrik, EU:C:1999:323, § 26; 30/06/2004, T‑186/02, Dieselit, EU:T:2004:197, § 38).
In the present case, the goods at issue target the public at large. They range from non-luxury to luxury and/or valuable goods and, hence, the degree of attention varies from average to high. The relevant territory is the European Union.
As far as the goods in Class 14 are made of precious metals or gems, the consumer’s level of attention is high and brand consciousness can play a decisive role (e.g. for luxurious watches). As far as the goods in Class 14 consist of non-precious materials (e.g. costume jewellery), the consumer’s level of attention is only average.
The goods in Class 16 for the most part do not involve a great deal of brand consciousness and many of the goods are usually sold at a low price and therefore do not involve a particularly careful and educated purchasing decision.
The consumers of clothing, headgear and footwear in Class 25 are quite circumspect and brand conscious. The value of clothing, headgear and footwear to the consumer is often closely related to the brand whether as an indicator of quality or as an indicator of image. For these goods the visual impact of the trade mark is also of special importance.

Comparison of the goods

The Opposition Division’s findings with regard to the comparison of the goods are confirmed.
The following goods of the application are identical because they are either identically included in the list of goods of the earlier trade mark or covered by the broad specifications of the earlier trade mark:

Class 14 – Jewellery, jewellery findings, ornaments, made of or coated with precious or semi-precious metals or stones, or imitations thereof, time instruments, 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;

Class 25 – clothing, headgear, footwear, caps with visors, sun hats, children’s headwear, leather headwear, pumps [footwear], footwear for women, children’s footwear, flip-flops, espadrilles, footwear [excluding orthopaedic footwear], clothing of leather, menswear, clothing of imitations of leather, casualwear, rainsuits, roll necks [clothing], leisurewear.

The following contested goods are similar to the opponent’s goods:

Class 14 – 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; 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; 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.

The following contested goods are dissimilar to the opponent’s goods:

Class 14 – 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;

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 mâché; ornamental sculptures made of papier mâché; 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 – Tongues for shoes and boots.

The Opposition Division correctly arrived at this conclusion in the contested decision. The parties have not contested this conclusion. No grounds are evident for doubting the conclusion. Although the Board of Appeal is required to conduct its own assessment of the similarity between the goods and services (see 13/09/2010, T‑292/08, Often, EU:T:2010:399, § 42), reference may be made in the process to the grounds of the contested decision if, as here, the Board of Appeal agrees therewith (see 09/07/2008, T‑304/06, Mozart, EU:T:2008:268, § 55).

Comparison of the trade marks

Conflicting trade marks have to be compared via a global appreciation of the visual, aural or conceptual similarity between them bearing in mind, in particular, their distinctive and dominant components (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 25).
The earlier mark is a word mark consisting of the word ‘CRISCA’. The contested mark is a figurative mark containing the two words ‘Kris’ and ‘Na’ and the following graphic elements: The lower half of the sign consists of a light grey square. On top of this light grey square there is a white square forming the upper half of the sign. In the centre of the white square there is a circle containing a naturalistic depiction of a female eye in black and white. The top of the circle is capped by a silver-grey coloured crown with seven arches (two in the foreground and another two in the background). A globe with a cross sits in the middle, on top of the crown. It is flanked by two birds with black backs and white chests and necks. At the bottom of the white square directly under the depiction of the female eye, the words ‘Kris’ and ‘Na’ are written in a black italic typeface.
The contested sign does not have a dominant element. Where a mark is composed of both word and figurative elements, the former are, as a rule, more distinctive than the latter, since the average consumer will more easily refer to branded goods by citing the word elements rather than by describing the figurative elements of the mark (15/12/2009, T‑412/08, Trubion, EU:T:2009:507, § 45 and the case-law cited therein). However, under certain circumstances the figurative elements can have the same weight as the verbal elements. This is especially the case where the importance of the verbal element is weakened by its insignificant position and relatively small size or a conceptual link between the figurative and the word elements (17/11/2010, R 144/2010-2, KUNGFU (fig.) / (fig.) et al., § 46-47; 26/04/2016, T‑21/15, Dino / Device of a dinosaur, EU:T:2016:241, § 72).
These requirements are fulfilled in the present case. The words ‘Kris’ and ‘Na’ are placed on the bottom of the white square below the circle containing a depiction of a female eye. Moreover, the words are written in a relative small size. The graphic element consisting of a depiction of an eye and a crown is roughly seven times as large as the word element ‘Kris Na’. Taken together, the light grey square and the white square with its further graphic elements are nearly fourteen times larger than the words ‘Kris Na’. Moreover, as the eye in the contested sign seems to look directly at the beholder, it catches the consumer’s attention. Therefore, the graphic elements in the contested sign have at least the same weight as the stylized word element ‘Kris Na’.
Visually, the signs are similar to the extent that they coincide in their second, third, fourth and last letters, i.e. ‘RIS’ and ‘A’. They differ in their first (‘C’ vs. ‘K’) and fifth (‘C’ vs. ‘N’) letters. Whereas the earlier sign consists of only one word, the verbal element in the contested sign is composed of two words, ‘Kris’ and ‘Na’. Both of them start with a capital letter followed by lower-case letters thus reinforcing the visual impression of separateness. The conflicting signs also differ in all the graphic elements of the contested sign not shared by the earlier sign. Due to the proportions between the verbal element ‘Kris Na’ and the graphic elements, the latter have a significant impact on the overall impression of the contested sign. According to case-law, even where two trade marks are composed of highly similar verbal elements that fact does not, by itself, support the conclusion that there is a visual similarity between the signs. The presence, in one of the signs, of figurative elements set out in a specific and original way can have the effect that the overall impression conveyed by each sign is different (see 11/12/2013, T‑487/12, Panini, EU:T:2013:637, § 44; 24/11/2005, T‑3/04, KINJI by SPA, EU:T:2005:418, § 48; 09/07/2003, T‑162/01, Giorgio Beverly Hills, EU:T:2003:199, § 74). Therefore, the conflicting signs are visually similar only to a low degree.
Aurally, for a substantial part of the relevant public the signs coincide in the pronunciation of the first three letters and the last letter. In many European languages, the letter ‘K’ is pronounced identically to the letter ‘C’. For all relevant consumers the signs differ aurally in the pronunciation of the fifth letter, ‘C’ in the earlier sign and ‘N’ in the contested sign. As the fifth letter forms, in both signs, the beginning of the second syllable (in the contested sign more precisely of the second word), the difference is noted more clearly than in cases where the letter is in the middle of one syllable. Whereas the letter ‘N’ creates a soft sound, the letter ‘C’ creates a hard sound. Besides, as correctly held by the Opposition Division the fact that the contested sign is composed of two words will lead consumers to add a short pause between the words ‘Kris’ and ‘Na’ generating a further (even though only moderate) difference with regard to pronunciation. Therefore, contrary to the opponent’s claim even for the part of the relevant public that pronounces the letters ‘K’ and ‘C’ identically, the signs are not similar to a high degree, but only to an average degree.
The earlier trade mark does not have any meaning. The word element in the contested mark ‘Kris Na’ may be perceived as either a reference to the masculine and feminine name ‘Kris’ or an allusion to the Hindu deity Krishna. The figurative elements will be associated with the concept of an eye and a crown with two birds on its top. Hence, the signs are not conceptually similar.
Taking into account the abovementioned visual, aural and conceptual coincidences and differences, the signs under comparison are similar only to a low degree.

Distinctive character

In determining the degree of distinctive character of a trade mark, an overall assessment has to be made of the greater or lesser capacity to identify the goods for which it has been registered as coming from a particular undertaking. Account should be taken of the inherent characteristics of the mark, including the fact that it does or does not contain an element that is descriptive of the goods for which it has been registered and other criteria; in particular, how intensive, geographically widespread and long-standing the use of the mark has been (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 22-23).
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, which is normal.

Overall assessment of the likelihood of confusion

The risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 16‑18; 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 30).
The essential function of the trade mark is to guarantee the identity of the origin of the marked product for the consumer or end user by enabling him, without any likelihood of confusion, to distinguish a product or service from those of others which have another origin. For the trade mark to be able to fulfil its essential role in the system of undistorted competition which the EUTMR seeks to uphold, it must offer a guarantee that all the goods or services showing the mark have originated under the control of a single undertaking which is responsible for their quality (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 28; see also seventh recital of the EUTMR). Besides that function of origin, the trade mark can perform other functions.
The appreciation of the likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the trade mark on the market, the association which can be made with the used or registered sign, the degree of similarity between the trade mark and the sign and between the goods or services identified (seventh recital of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).
Such a global assessment of the likelihood of confusion implies some interdependence between the relevant factors, and in particular a similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).
For the goods found to be dissimilar (see paragraph 21) there is no likelihood of confusion since one of the fundamental requirements of Article 8(1)(b) EUTMR (identity or similarity between the conflicting goods) is not fulfilled.
For the remaining goods in Classes 14 and 25 (found to be identical or similar to the earlier mark’s goods) a likelihood of confusion does not exist either (see the comparable case, 13/01/2014, R 769/2013-1, HAPPY NAPPY / HAPPYPUPPY (fig.), § 32). The conflicting signs are aurally similar to an average degree. However, they are visually similar only to a low degree and conceptually dissimilar.
It is settled case-law that in the global assessment of the likelihood of confusion, the visual, aural or conceptual aspects of the opposing signs do not always have the same weight. It is appropriate to examine the objective conditions under which the marks may be present on the market (see 03/07/2003, T‑129/01, Budmen, EU:T:2003:184, § 57).
According to the same line of case-law, the extent of the similarity or difference between the signs may depend, in particular, on the inherent qualities of the signs or the conditions under which the goods covered by the opposing signs are marketed. If the goods covered by the mark in question are usually sold in self-service stores where consumers can choose the product themselves and must therefore rely primarily on the image of the trade mark applied to the product, the visual similarity between the signs will, as a general rule, be more important (see 06/10/2004, T‑117/03 - T‑119/03 & T‑171/03, NL, EU:T:2004:293, § 49).
Generally in shops for clothing, headgear or footwear, customers can either choose the goods they wish to buy themselves or be assisted by sales staff. Whilst oral communication in respect of the product and the trade mark is not excluded, the choice of the item is generally made visually. Therefore, the 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 (see 06/10/2004, T‑117/03 - T‑119/03 & T‑171/03, NL, EU:T:2004:293, § 50).
The same is true for the conflicting goods in Class 14 that were found to be either identical or similar (see paragraphs 19-20). Jewellery, clocks and other decorative articles are usually first inspected visually before they are bought.
Consequently, on account of the significantly different overall visual impression that the conflicting signs create and to which more relevance has to be given because the goods are primarily chosen on the basis of their visual aspect, a likelihood of confusion between the conflicting marks can be excluded. Even if they are used in relation to identical goods, the reasonably well informed and reasonably observant and circumspect average consumer displaying a normal degree of attentiveness will not confuse them. The appeal must, therefore, be dismissed.

Earlier German trade mark

As correctly stated by the Opposition Division earlier German trade mark No 30 2014 054 379 is even less similar to the contested trade mark than earlier European Union trade mark No 5 997 853 owing to the additional figurative elements not shared by the contested sign. Therefore, a fortiori, no likelihood of confusion exists with regard to this earlier sign even for identical goods.

Costs

Since the opponent is the losing party, it must in principle bear the fees and costs of the applicant in accordance with Article 85(1) EUTMR and Rule 94(1) CTMIR.
Pursuant to Article 85(6) EUTMR the Board shall fix the amount of the costs to be paid when they are limited to the fees paid to the Office and to the winning party’s representation costs of a professional representative in the sense of Article 85(1) EUTMR, which amount to EUR 550 as specified in Rule 94(3) and (7)(d) CTMIR, irrespective of whether they have actually been incurred. The applicant did not file any observations in the appeal proceedings nor did it appoint a lawyer. Therefore, it has not incurred any representation costs in the appeal proceedings.
With respect to the costs of the opposition procedure, the contested decision, which is upheld, already contains a decision.

Order

On those grounds,

THE BOARD

hereby:

Dismisses the appeal.

Signed

Th. M. Margellos

Signed

Ph. von Kapff

Signed

M. Bra

Registrar:

Signed

H.Dijkema

05/10/2016, R 439/2016-1, Kris Na (fig.) / CRISCA et al.

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