OPPOSITION No B 2 720 194

Eurostar Diamond Traders, naamloze vennootscap, Hoveniersstraat 53, 2018 Antwerpen, Belgium (opponent), represented by Bureau M.F.J. Bockstael N.V., Arenbergstraat 13, 2000 Antwerpen, Belgium (professional representative)

a g a i n s t

FMTM Distribution Ltd, 3A and 3B Isle of Man Freeport, IM9 2AP Ballasalla, Isle of Man (applicant), represented by Ingenias, Av. Diagonal, 421, 2º, 08008 Barcelona, Spain (professional representative).

On 26/03/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 720 194 is upheld for all the contested goods, namely:

Class 14: Precious stones; semi-precious stones; diamonds; imitation precious stones.

2. European Union trade mark application No 13 766 811 is rejected for all the contested goods. It may proceed for the remaining goods.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 13 766 811 for the word mark ‘HEART’, namely against some of the goods in Class 14. The opposition is based on, inter alia, European Union trade mark registration No 2 625 937 for the word mark ‘HEART TO HEART’. The opponent invoked Article 8(1)(a) and (b) EUTMR.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years. The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant has not submitted the request for proof of use by way of a separate document as required by Article 10(1) EUTMDR. Therefore, the request for proof of use is inadmissible pursuant to Article 10(1) EUTMDR.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

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 European Union trade mark registration No 2 625 937.

a) The goods

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

Class 14: Diamonds and precious jewellery.

The contested goods are the following:

Class 14: Precious stones; semi-precious stones; diamonds; imitation precious stones.

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 precious stones include, as a broader category, the opponent’s diamonds. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

Diamonds are identically contained in both lists of goods.

The contested semi-precious stones; imitation precious stones are highly similar to the opponent’s diamonds since they are all used in the jewellery industry as components for making jewellery. They have the same purpose, distribution channels, sales outlets, producers and method of use, and target the same public. Furthermore, they are in competition.

b) 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 highly similar are directed at the public at large and at business customers with specific professional knowledge or expertise in the diamond and precious stones industry and trade.

The degree of attention may vary from average to high.

In its decision of 09/12/2010, R 900/2010‑1, Leo Marco (fig.) / LEO, § 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.

c) The signs

HEART TO HEART	HEART
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 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).

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Given that the common element of the signs, ‘HEART’, is meaningful in certain languages of the relevant territories, for example in those countries where English is understood, the Opposition Division finds it appropriate to focus the comparison of the signs on the non-English-speaking part of the public, such as the Italian- and Spanish‑speaking part, for whom this word is meaningless and therefore normally distinctive for the goods at issue.

As neither of the signs has a meaning for the part of the public of the relevant territory being considered, they are normally distinctive for the goods in question.

Visually, the signs coincide in the distinctive element ‘HEART’. However, they differ in that the earlier mark contains the same word ‘HEART’ twice, separated by the letters ‘TO’.

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 distinctive word ‘HEART’, present identically in both signs, and present twice in the earlier mark. The pronunciation differs in the sound of the letters ‛TO’ of the earlier mark, which has no counterpart in the contested sign.

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

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

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

d) 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.

e) Global assessment 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.

In the present case, the goods are identical or highly similar. They target the general and professional public, whose degree of attention may vary from average to high. The earlier mark is considered to have a normal degree of distinctiveness in relation to the goods.

The signs are visually and aurally similar to an average degree insofar as they coincide in the distinctive element ‘HEART’. The only differences lie in the earlier mark, in which the common element is repeated twice, separated by the element ‘TO’. A conceptual comparison is not possible.

Due to the striking similarities between the goods and between the signs, the differences between the signs will go unnoticed. 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). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

Considering all the above, there is a likelihood of confusion on the part of the Italian- and Spanish-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 2 625 937. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier right ‘HEART TO HEART’ leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(1)(a).

COSTS

According to Article 109(1) EUTMR, 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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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

José Antonio GARRIDO OTAOLA

Valeria ANCHINI

Edith Elisabeth VAN DEN EEDE

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.