OPPOSITION No B 2 494 576

PRG Watch Manufactory Limited, Unit C, 2/F China Insurance Bldg., No 48 Cameron Road, Tsimshatsui, Hong Kong Special Administrative Region of the People’s Republic of China (opponent), represented by Marshall Law, Vineyard Cottage, St Julians, Sevenoaks, Kent TN15 0RX, United Kingdom (professional representative)

a g a i n s t

Luv Galaxy Company Limited, Flat/RM F, 16/F, Kingpalace Plaza, 55 King Yip Street, Kwun Tong, KL, Hong Kong, Hong Kong Special Administrative Region of the People’s Republic of China (applicant), represented by Champion Intellectual Property Management Limited, Suite 10086, 6 Slington House, Rankine Road, Basingstoke, Hampshire RG24 8PH, United Kingdom (professional representative).

On 23/02/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 494 576 is upheld for all the contested goods, namely:

Class 14: Amulets [jewellery]; necklaces [jewellery]; jewelry; ornamental pins; statues of precious metal; hat ornaments of precious metal; earrings; figurines [statuettes] of precious metal; badges of precious metal; jewelry cases [caskets]; clasps for jewelry; bracelets [jewelry]; brooches [jewellery, jewelry (Am.)]; jewelry chains; ornaments (jewellery, jewelry (Am.)); pins (tie -); pins (ornamental -); charms [jewellery, jewelry (Am.)]; gemstones, pearls and precious metals, and imitations thereof; jewellery; jewellery boxes and watch boxes; time instruments; ornaments, made of or coated with precious or semi-precious metals or stones, or imitations thereof; statues and figurines, made of or coated with precious or semi-precious metals or stones, or imitations thereof

2. Community trade mark application No 13 555 206 is rejected for all the contested goods. It may proceed for the remaining goods.

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

REASONS:

The opponent filed an opposition against some of the goods of Community trade mark application No 13 555 206, namely against all the goods in Class 14. The opposition is based on Community trade mark registration No 4 790 903. 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 the following:

Class 14: Horological and chronometric instruments; watches, clocks; jewellery; parts and fittings for all the aforesaid.

The contested goods are the following:

Class 14: Amulets [jewellery]; necklaces [jewellery]; jewelry; ornamental pins; statues of precious metal; hat ornaments of precious metal; earrings; figurines [statuettes] of precious metal; badges of precious metal; jewelry cases [caskets]; clasps for jewelry; bracelets [jewelry]; brooches [jewellery, jewelry (Am.)]; jewelry chains; ornaments (jewellery, jewelry (Am.)); pins (tie -); pins (ornamental -); charms [jewellery, jewelry (Am.)]; gemstones, pearls and precious metals, and imitations thereof; jewellery; jewellery boxes and watch boxes; time instruments; ornaments, made of or coated with precious or semi-precious metals or stones, or imitations thereof; statues and figurines, made of or coated with precious or semi-precious metals or stones, or imitations thereof.

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.

The contested amulets [jewellery]; necklaces [jewellery]; ornamental pins; hat ornaments of precious metal; earrings; badges of precious metal; clasps for jewelry; bracelets [jewelry]; brooches [jewellery, jewelry (Am.)]; jewelry chains; ornaments (jewellery, jewelry (Am.)); pins (tie -); pins (ornamental -); charms [jewellery, jewelry (Am.)]; gemstones, pearls, and imitations thereof; ornaments, made of or coated with precious or semi-precious metals or stones, or imitations thereof are included in the broad category of the opponent’s jewellery; parts and fittings for all the aforesaid. Therefore, they are identical.

The contested jewelry; jewellery; time instruments are identically contained in both lists of goods (including synonyms).

The contested statues of precious metal; figurines [statuettes] 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 main purpose of the opponent’s jewellery – although it can be used for the same purposes as given above – is personal adornment. Therefore, the opponent’s jewellery is at least similar to the contested goods to the extent that they have the same distribution channels (e.g. jewellery shops), producers and relevant public, namely purchasers of valuables.

The contested precious metals, and imitations thereof are similar to the opponent’s parts and fittings for all the aforesaid [for jewellery], since they all are materials for the production of jewellery; therefore, they have the same nature and can have the same relevant public (jewellery manufacturers) and distribution channels.

The contested jewelry cases [caskets]; jewellery boxes and watch boxes are similar to the opponent’s jewellery and horological instruments, as they can have the same producer, end users and distribution channels. Furthermore, they are complementary.

2. Relevant public – degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods found to be identical or similar are directed at the public at large (jewellery, time instruments) and at business customers with specific professional knowledge or expertise, such as jewellers (gemstones, pearls and precious metals, and imitations thereof).

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

3. The signs

Earlier trade mark	Contested sign

The relevant territory is the European Union.

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

The earlier mark is a figurative mark consisting of the letters ‘Luv’ in a standard black typeface.

The contested sign is a figurative mark consisting of the letters ‘luv’ followed by a dot or a full stop in a stylised pink typeface.

The coinciding element, ‘LUV’, will be understood by the English-speaking part of the public as ‘an abbreviation for love’ (information extracted from Collins English Dictionary on 16/02/2016 at http://www.collinsdictionary.com/dictionary/english/luv) and by the German-speaking part of the public as ‘dem Wind zugekehrte Seite (besonders eines Schiffes, eines Gebirges)’ [windward side (in particular in ships, mountain ranges)] (information extracted from Duden on 16/02/2016 at http://www.duden.de/suchen/dudenonline/luv). This element has no meaning for the rest of the relevant territory.

The marks have no elements that could be considered clearly more distinctive or more dominant (visually eye-catching) than the other elements.

Visually, the signs coincide in the letters ‘LUV’. However, they differ in their typefaces and colours and in the dot or full stop of the contested mark.

When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37; 19/12/2011, R 233/2011‑4, Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011‑5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59). Therefore, the stylisation of the letters will have a limited impact on the consumer, who will refer to these marks by their verbal elements.

Therefore, the signs are visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛LUV’, present identically in both signs. It is unlikely that the full stop after the letters ‘LUV’ in the contested sign will be pronounced. Consequently, there is no difference in the pronunciation of the signs.

Therefore, the signs are aurally identical.

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

The English- and German-speaking parts of the public will perceive the signs as ‘an abbreviation for love’ and as ‘windward side’, respectively. As the signs will be perceived as having the same meaning by each of these parts of the public, the signs are conceptually identical for them.

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

4. Distinctiveness of the earlier mark

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

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

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

5. Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

Some of the goods are identical and some of the goods are similar. The signs are aurally identical, visually similar to an average degree and, for part of the public, conceptually identical. Even though the public may have a higher than average degree of attention, the public may not safely distinguish between the signs on account of the aural identity and visual similarity.

Moreover, account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

The applicant argues that its CTM was first used in 2008 and has since then launched goods on the market, and it submitted various pieces of evidence to substantiate this claim.

The right to a CTM begins on the date when the CTM is filed and not before, and from that date on the CTM has to be examined with regard to opposition proceedings.

Therefore, when considering whether or not the CTM falls under any of the relative grounds for refusal, events or facts which happened before the filing date of the CTM are irrelevant because the rights of the opponent, insofar as they predate the CTM, are earlier than the applicant’s CTM.

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

Therefore, the opposition is well founded on the basis of the opponent’s Community trade mark registration No 4 790 903. It follows that the contested trade mark must be rejected for all the contested goods.

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

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

The Opposition Division

Beatrix STELTER

LORENA MARTINEZ CARRION

Vít MAHELKA

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.