DECISION

of the Fourth Board of Appeal

of 25 October 2016

In Case R 586/2016-4

TISSOT SA
17 Chemin des Tourelles Le Locle 2400 Switzerland	Opponent / Appellant

represented by DESPACHO GONZÁLEZ-BUENO, S.L.P., Calle Velázquez 19, 2º dcha., 28001 Madrid, Spain

v

AAGAARD/KRANZ & ZIEGLER A/S
Grønnemosevej 6 5700 Svendborg Denmark	Applicant / Respondent

represented by OTELLO LAWFIRM, Engdahlsvej 12a, 7400 Herning, Denmark

APPEAL relating to Opposition Proceedings No B 2 488 750 (European Union trade mark application No 13 393 301)

The Fourth Board of Appeal

composed of D. Schennen (Chairperson), S. Martin (Rapporteur) and C. Bartos (Member)

Registrar: H. Dijkema

gives the following

Decision

Summary of the facts

1. By an application filed on 22 October 2014, the respondent sought to register the word mark

Couture by Kranz & Ziegler

for the following goods:

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.

2. On 9 March 2015, the appellant filed an opposition against the registration of the trade mark for all the goods applied for. The grounds of opposition were those laid down in Article 8(1)(b) EUTMR. The opposition was based on the earlier international trade mark registration No 1 008 960 (‘earlier mark’)

TISSOT COUTURIER

designating the European Union and registered on 27 May 2009, for the following goods:

Class 14 - Precious metals and their alloys and goods in precious metals or coated therewith included in this class; jewellery, precious stones; horological and chronometric instruments.

3. By decision of 10 February 2016 (‘the contested decision’), the Opposition Division rejected the opposition in its entirety reasoning that the signs were not similar. The verbal elements ‘COUTURE’ in the contested mark and ‘COUTURIER’ in the earlier mark were weak because they were descriptive and non-distinctive for the goods at issue. Focusing on the other elements of the conflicting marks the highly attentive public would note the substantial differences between them.

Submissions and arguments of the parties

4. On 28 March 2016, the appellant filed an appeal against the contested decision, followed by its statement of grounds. The appellant requests that the decision be annulled and the opposition allowed in its entirety on the ground that the conflicting signs are similar and the conflicting goods are identical, leading to a likelihood of confusion. The appellant argues that due to its position at the beginning of the contested sign, the verbal element ‘COUTURE’ is the dominant element in the contested mark. Comparing ‘COUTURE’ with ‘TISSOT COUTURIER’, the similarities between the conflicting marks outweigh their differences. In view of the identity between the goods and the similarity between the signs, a likelihood of confusion exists.

5. The respondent filed observations in reply, endorsing the Opposition Division’s analysis, requesting that the appeal be dismissed and that the appellant be ordered to bear the costs.

Reasons

6. The appeal is admissible but not well founded. The opposition fails under Article 8(1)(b) EUTMR because the differences between the conflicting signs are sufficient to exclude likelihood of confusion.

Article 8(1)(b) EUTMR

7. According to Article 8(1)(b) EUTMR, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall not be registered if, because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark. 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 (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

8. Since the earlier mark is an international trade mark registration designating the European Union, the relevant territory for analysing the likelihood of confusion is that of the European Union.

9. The goods at issue in Class 14 are aimed at the general public. The level of attention is above average, as these goods are expensive luxury items and not purchased on a regular basis.

10. The Opposition Division correctly found the conflicting goods to be identical. This reasoning was not contested by the appellant and is endorsed by the Board with explicit reference being made to it.

Comparison of the signs

11. The following signs are to be compared:

    Contested mark	Earlier mark
    Couture by Kranz & Ziegler	TISSOT COUTURIER

12. The assessment of the visual, phonetic or conceptual similarities 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; 06/10/2005, C‑120/04, Thomson Life, EU:C:2005:594, § 28).

13. The conflicting signs are both word marks, each consisting of several verbal elements.

14. The Board concurs with the Opposition Division that the term ‘COUTURE’ is non-distinctive for the goods at issue. Consumers interested in luxury items, such as jewellery, are fully aware of the meaning of the word and will associate ‘COUTURE’ with luxury goods, in particular items of ‘haute couture’, an expression known and used in all parts of the European Union to denote high-end fashion. The goods in question, namely precious metals and their alloys and goods in precious metals or coated therewith, as well as jewellery, precious stones, horological and chronometric instruments are either materials used by designers and dressmakers of haute-couture items or accessories for these items. It follows that the well-informed and highly-attentive consumer of said luxury goods will not refer to the contested mark as ‘COUTURE’ despite its position at the beginning. Instead, the consumer will look for a more specific term which contains information about the origin of the goods. Such information is offered by the subsequent verbal element ‘by Kranz & Ziegler’. The relevant public will perceive this subsequent element as the true indicator of origin and focus its attention to it, to the detriment of the term ‘COUTURE’.

15. Visually, the conflicting signs coincide in the term ‘COUTUR’ which is part of the non-distinctive elements in the signs to which the attention of the consumers will not be directed. The distinctive parts of the conflicting signs, namely ‘TISSOT’ of the earlier mark and ‘by Kranz & Ziegler’ of the contested sign, have only a single letter ‘i’ in common. The conflicting signs are visually dissimilar.

16. Aurally, the pronunciation of ‘TISSOT’ is very different to that of ‘by Kranz & Ziegler’. The conflicting signs are aurally dissimilar.

17. Conceptually, similarity between conflicting signs cannot result from the use of a non-distinctive term. The distinctive parts of the signs are names and, as such, do not constitute a concept.

Global assessment of a likelihood of confusion

18. According to the case-law of the Court of Justice, 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.

19. Since, overall, the signs are not similar, there can be no likelihood of confusion in accordance with Article 8(1)(b) EUTMR.

20. Consequently, the opposition based on Article 8(1)(b) EUTMR must be rejected and the appeal dismissed.

Costs

21. As the appellant is the losing party in the opposition and appeal proceedings within the meaning of Article 85(1) EUTMR, it must be ordered to bear the corresponding costs incurred by the respondent.

Fixing of costs

22. Pursuant to Article 85(6) EUTMR in conjunction with Rule 94(3) CTMIR, the decision of the Board shall, where applicable, include the fixing of the costs and fees to be paid by the losing party. According to Rule 94(7)(d)(ii) and (v) CTMIR, the representation costs of the opposition proceedings are fixed at EUR 300 and those of the appeal proceedings at EUR 550. The total amount to be paid is EUR 850.

Order

On those grounds,

THE BOARD

hereby:

1. Dismisses the appeal;

2. Rejects the opposition;

3. Orders the appellant to bear the fees and costs in the opposition and appeal proceedings;

4. Fixes the amount of costs and fees to be paid by the appellant to the respondent at EUR 850.

Signed D. Schennen

Signed S. Martin

Signed C. Bartos

Registrar: Signed H.Dijkema