OPPOSITION No B 2 488 750

Tissot SA, 17 Chemin des Tourelles, 2400 Le Locle, Switzerland (opponent), represented by Despacho González-Bueno, S.L.P., Calle Velázquez 19, 2º, dcha., 28001 Madrid, Spain (professional representative)

a g a i n s t

Aagaard/Kranz & Ziegler A/S, Grønnemosevej 6, 5700 Svendborg, Denmark (applicant), represented by Otello Lawfirm, Engdahlsvej 12a, 7400 Herning, Denmark (professional representative).

On 10/02/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 488 750 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the goods of Community trade mark application No 13 393 301. The opposition is based on international trade mark registration designating the European Union No 1 008 960. 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.

1. The goods

The goods on which the opposition is based are, inter alia, 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: Precious metals and their alloys and goods in precious metals and coated therewith, not included in other classes, jewellery, ornaments (jewellery), jewellery, namely bracelets, bracelets, pendants, jewellery fasteners, necklaces, necklaces, amulets, rings (jewellery, jewelry (am.)), earrings, brooches (jewellery), ornamental pins, tie pins, cufflinks, key rings and key fobs, pearl, jewellery stones, paste jewellery [costume jewellery]; horological and chronometric instruments.

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

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

The contested precious metals and their alloys and goods in precious metals and coated therewith, not included in other classes, jewellery; horological and chronometric instruments are identically contained in both lists of goods.

The contested ornaments (jewellery), jewellery, namely bracelets, bracelets, pendants, jewellery fasteners, necklaces, necklaces, amulets, rings (jewellery, jewelry (am.)), earrings, brooches (jewellery), ornamental pins, tie pins, cufflinks, paste jewellery [costume jewellery] are included in the broad category of the opponent’s jewellery. Therefore, they are identical.

The contested key rings and key fobs are included in the broad category of the opponent’s goods in precious metals or coated therewith, not included in other classes. Therefore, they are identical.

The contested pearl, jewellery stones are included in the broad category of the opponent’s jewellery, precious stones. Therefore, they are identical.

2. The signs

TISSOT COUTURIER	Couture by Kranz & Ziegler
Earlier trade mark	Contested sign

The relevant territory is the European Union.

Visually, the signs are similar to the extent that they both contain the letters ‘COUTUR’ and the letter ‘E’ in a single word element that appears in different positions. However, the signs differ in the word ‘TISSOT’ and in the letters ‘I*R’ of the second element of the earlier mark and in the words ‘by Kranz & Ziegler’ of the contested sign. The contested sign consists of four words plus the ampersand symbol (22 characters), and there is therefore a significant difference in the visual impression created by the marks, as the contested sign is much longer than the earlier mark, which consists of only two words (15 characters).

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs is the same in the sound of the letters ‘COUTUR’ and in some cases in the letter ‘E’, which is silent in some languages, such as French. To that extent, the signs are aurally similar. The pronunciation differs in the sound of the letters ‛TISSOT’ and ‘I*R’ of the earlier sign and in the words ‘by Kranz & Ziegler’ of the contested mark. The connector ‘&’ will be pronounced according to the language used, for example in English as the word ‘and’.

Conceptually, the element ‘COUTURIER’ in the earlier mark will be associated, at least by the English-, German- and French-speaking parts of the public, with ‘a person who designs, makes, and sells fashion clothes for women’ (information extracted from Collins English Dictionary on 19/01/2016 at http://www.collinsdictionary.com/dictionary/english/couturier; similar definitions are included in Duden at http://www.duden.de/suchen/dudenonline/couturier and Le Dictionaire at http://www.le-dictionnaire.com/definition.php?mot=couturier). The element ‘COUTURE’ of the contested sign is a French word that the relevant public will associate with the expression ‘haute couture’ and that has been incorporated into numerous languages, such as English (information extracted from Collins English Dictionary on 21/01/2016 at http://www.collinsdictionary.com/dictionary/english/couture) and German (information extracted from Duden on 22/01/2016 at http://www.duden.de/suchen/dudenonline/couture). It will be perceived by the public as meaning ‘high-fashion designing and dressmaking’.

The English word ‘by’ in the contested sign is commonly used in the relevant territories in order to show that the words following it (‘Kranz & Ziegler’ in the present case) correspond to its commercial origin or designate the party responsible for the goods in question.

The elements ‘TISSOT’ and ‘Kranz’ and ‘Ziegler’ will be perceived as names or surnames by at least part of the relevant public. Moreover, the German-speaking part of the public will perceive the element ‘Kranz’ of the contested sign as a ‘ring of braided or tied flowers’ (information extracted on 04/02/2016 from Duden at http://www.duden.de/rechtschreibung/Kranz). For the remaining part of the relevant public, these words will be meaningless.

Finally, the ampersand symbol, ‘&’, in the contested sign is generally understood in all the Member States and the meaning of the conjunction ‘and’ will be attributed to it.

To the extent that the earlier mark and the contested sign contain ‘COUTURIER’ and ‘COUTURE’, respectively, the signs are conceptually similar to a low degree for the part of the relevant public that understands ‘COUTURIER’, since these terms will be associated with a person who designs, makes, and sells fashion clothes for women (‘COUTURIER’) and high-fashion designing and dressmaking (‘COUTURE’). For the part of the relevant public that does not understand ‘COUTURIER’, the signs are not conceptually similar.

Taking into account the abovementioned visual, aural and, for part of the public, conceptual 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 elements ‘COUTURE’ of the contested sign and ‘COUTURIER’ of the earlier mark will be associated with high-fashion designing and dressmaking and with a designer of fashion clothes, respectively. As the relevant goods are jewellery and horological instruments, it is considered that these elements are weak for these goods. Contrary to the opponent’s arguments, the element ‘COUTURE’ is laudatory to the extent that it alludes to the connection of these goods with fashion and indicates ‘high class’ or ‘high quality’. The public understands the meaning of these elements and will not pay as much attention to these weak elements as to the other, more distinctive, elements of the mark. Consequently, the impact of these weak elements is limited when assessing the likelihood of confusion between the marks at issue.

The element ‘by’ in the contested sign will be understood as introducing the creator of the goods. This element is generally of weak distinctive character. The public understands the meaning of the element and will not pay as much attention to this weak element as to the other, more distinctive, elements of the mark. Consequently, the impact of this weak element is limited when assessing the likelihood of confusion between the marks at issue.

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

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

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, despite the presence of a weak element in the mark as stated above in section c) of this decision.

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 are directed at the public at large (jewellery, horological instruments) and at business customers with specific professional knowledge or expertise, such as jewellers (precious metals, jewellery stones).

The degree of attention will vary from average to higher than average for business customers and even for the public at large, since the goods are purchased on the basis of personal preference, can be rather expensive and are normally acquired on an infrequent basis (21/10/2015, R 639/2015-5, THE PURSUIT OF BRILLIANCE, § 22; and 30/09/2015, R 115/2015-2, DREAM CATCHER, § 16).

6. Global assessment, other arguments and conclusion

The goods are identical and the signs are visually and aurally similar insofar as they have in common the letters ‘COUTUR’ and – from the aural perspective, at least for part of the public – the letter ‘E’. They are also conceptually similar to a low degree for a part of the public. As stated in section c) above, the elements ‘COUTURE’ in the contested sign and ‘COUTURIER’ in the earlier mark are weak.

The overall impressions created by the signs are different, as the earlier mark comprises two words with 15 characters and the contested sign comprises four words plus the ampersand symbol, with 22 characters. There is a substantial difference in length and in the number of words, which will not go unnoticed by average consumers, who are deemed to be reasonably well informed and reasonably observant and circumspect, even though they may not have the chance to make a direct comparison.

Moreover, the first parts of the conflicting marks are different. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. Consequently, the different first elements of the marks at issue have to be taken into account when assessing the likelihood of confusion between the marks.

The additional and clearly different elements are easily perceptible and sufficient to exclude any likelihood of confusion between the marks, in particular bearing in mind that the similarities between the signs result from elements of weak distinctive character.

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

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.

The Opposition Division

Beatrix STELTER

LORENA MARTINEZ CARRION

Julie GOUTARD

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.

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) CTMIR, 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 (Article 2(30) CTMFR) has been paid.