OPPOSITION No B 2 551 854

Compagnie des Montres Longines, Francillon S.A. (Longines Watch Co., Francillon Ltd.), 2610 St-Imier, 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

Woorim FMG Co., Ltd., Specialty Contractors Hall 23F, 15 Boramae-ro 5-gil, Dongjak-gu, Seoul 07071, Republic of Korea (applicant), represented by Cabinet Plasseraud, Immeuble le Rhône Alpes, 235, Bis cours Lafayette, 69006 Lyon, France (professional representative).

On 28/04/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 551 854 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 14 107 304, namely against all the goods in Class 14. The opposition is based on European Union trade mark registration No 225 714, which covers goods in Class 14. The opponent invoked Articles 8(1)(b) and 8(5) EUTMR.

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.

1. 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 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).

Assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components.

The earlier mark comprises a fanciful depiction of extended wings, delineated in an angular manner. In the middle section, there is a rectangle featuring an X-shape which may or may not be perceived as a stylised hourglass. In any event, the earlier mark has no clearly identifiable/separable components. In the context of goods in Class 14, the inherent distinctiveness of this device is considered to be average.

The contested sign is a composite mark comprising the word ‘DOGFIGHT’ represented in large, bold and slightly stylised letters. In the upper part of the sign, there is a stylised, frontal depiction of an aeroplane, reminiscent of a biplane. It has two wings on each side, represented by narrow, black lines, the top wings being much longer. In the middle section of the device, there is a short vertical line that can be seen as a tail wing, the circles can be perceived as representing a rotating propeller, and the two diagonal shapes will most probably be seen as the landing gear of the aircraft. In the lower part of the sign, there is the element ‘SINCE 1919’ which is portrayed in a much smaller size than the word ‘DOGFIGHT’.

The opponent claims that the figurative element of the contested sign has higher distinctiveness than the verbal components, without however putting forward convincing reasoning to support that.

At this point, it is appropriate to indicate that the contested goods are a range of jewellery items, precious stones and metals, cases for jewellery or watches, horological and chronometric instruments and parts thereof, all included in Class 14. On the assumption that, following the applicant’s request for proof of use, genuine use of the earlier mark had been proven for all the goods invoked, the goods on which the opposition is based essentially are the same, except for the articles used for presenting jewellery or watches.

On the one hand, the Opposition Division accepts that, indeed, the aeroplane device is fanciful and distinctive to an average degree for the goods at issue, whilst the expression ‘SINCE 1919’ will be perceived by the majority of the public in the relevant territory as referring to the fact that a brand was created, or that a company was established, in that particular year and that it has been available, or has been operating, since then. That perception can be reasonably assumed on account of such expressions being commonly used, in trade and marketing, across the relevant territory. For the part of the public who does not attribute any meaning to the English word ‘SINCE’, the presence of the year still evokes the abovementioned idea. Thus, the element ‘SINCE 1919’ is non-distinctive for the English-speaking part of the public, and weak for the rest.

On the other hand, the Opposition Division fails to see a solid reason as to why the word ‘DOGFIGHT’ would have diminished distinguishing capacity. The English-speaking part of the public in the relevant territory will perceive it as referring to close quarters combat between fighter aircraft, a fight between dogs, or any rough, violent fight. These meanings are arbitrary in relation to the goods at issue. The non-English-speaking part of the public will not attach any clear semantic content to this word. In any event, this element is fanciful and endowed with an average degree of inherent distinctiveness.

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). The well-settled case-law clearly applies to the present case, irrespective of whether the public understands the English meaning of the verbal element ‘DOGFIGHT’ or not. Furthermore, where the public perceives the thematic link between the aeroplane device and the concept related to aircraft combats conveyed by the verbal element, the figurative element, albeit distinctive, serves as an illustration. Last but not least, the verbal element, ‘DOGFIGHT’, is the most eye-catching component in the visual impression produced by the contested sign, in view of its graphical features, central position and relative size vis-à-vis the other elements.

Visually, the signs coincide inasmuch as the devices depict horizontally stretching shapes with a lower central element. However, there are striking differences in all aspects. The earlier mark is composed of thin outlines with a see-through effect. The contested sign’s device is portrayed in solid, black shapes with the exception of the small white circle which represents the centre of the propeller. The middle sections of the devices show immediately perceptible differences. The earlier mark’s rectangle with the X-shape (the hourglass) has no graphical commonalities whatsoever with the circular shapes and the upside-down Y-shape (the tail wing and the landing gears combined) appearing in the contested sign. Also the wings are represented in significantly different manners. The double-wings in the contested sign have the mechanical look of those of an aeroplane (biplane), whereas the wings in the earlier mark are reminiscent of a soaring bird.

The opponent argues that, where the marks in question are used for instance on jewellery articles or watches, the public will not be able to perceive the differences in the devices given their small representations. The Opposition Division notes that, in addition to the outstanding differences that lie in the devices which will not go unnoticed by the public, the contested sign differs in its particularly easily visible verbal element, ‘DOGFIGHT’.

For the sake of completeness, it has to be mentioned that the contested sign also differs in ‘SINCE 1919’, but the impact of this subordinate element is very limited.

The opponent cites the decisions of 27/02/2002, R 68/2001-4 and R 285/2001-4 - Fig. mark (animal’s footprint) / Fig. mark (animal’s footprint) ‘LA MAISON DE LA FAUSSE FOURRURE’, and the judgment of the General Court, 14/12/2006, T‑81/03, T‑82/03 & T‑103/03, Venado, EU:T:2006:397, to emphasise that consumers will focus on the most prominent part of the marks which increases the similarity between them in the perception of the public. In the present case, however, the figurative element in the contested sign, despite its top position, cannot be regarded as the sign’s dominant element, given the conspicuous depiction of the element ‘DOGFIGHT’, as described above.

As the signs only coincide in irrelevant aspects, in terms of horizontal devices with a lower central element which nevertheless show significant differences, it is concluded that the signs are visually dissimilar.

To support its arguments the opponent refers to previous decisions of the Office involving the same earlier mark. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities. This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case. In the present case, the previous cases referred to by the opponent are not relevant to the present proceedings:

• Decision of 26/05/2015 (after corrigendum of 31/07/2015), R 2060/2014-5 - ‘GD’ (Fig.) / Device of extended wings .

• Decision of 10/07/2014, R 1636/2013-2 - ‘HTH’ (Fig.) / Device of extended wings .

• Decision of 18/06/2010, B 1 366 121, / Device of extended wings .

None of the contested trade marks in the abovementioned previous cases contains a verbal element that would be comparable to the visually eye-catching element, ‘DOGFIGHT’, of the contested sign. Therefore, the Opposition Division finds that the previous cases are not comparable to the case at hand.

The opponent also refers to previous national decisions involving the same earlier mark. However, it must be noted that decisions of national courts and national offices regarding conflicts between identical or similar trade marks on the national level do not have a binding effect on the Office since the European Union trade mark regime is an autonomous system which applies independently of any national system (13/09/2010, T‑292/08, Often, EU:T:2010:399).

Even though previous national decisions are not binding, their reasoning and outcome should be duly considered, particularly when the decision has been taken in the Member State that is relevant to the proceedings.

In the present case, the previous cases referred to by the opponent are not relevant to the proceedings at hand:

• Decisions of the Swiss Trade Mark Office do not concern the relevant territory of the present proceedings.

• Decisions of the Spanish Patent and Trade mark Office, and the judgment of the High Court of Madrid concern contested signs with at least some visual similarity vis-à-vis the opponent’s mark, in the sense that they depict stylised bird wings and that they do not feature other, more visually eye-catching elements:

Decision of 02/08/2011, Spanish trade mark No 2 966 986	Judgment of 19/02/2009, Spanish trade mark No 2 632 692	Decision of 30/09/2008, Spanish trade mark No 2 798 695. Decision of 07/12/2011, Spanish trade mark No 2 957 254	Decision of 14/10/2008, Spanish trade mark No 2 811 020

Therefore, the opponent’s arguments must be set aside.

Purely figurative signs are not subject to a phonetic assessment. As one of the signs is purely figurative, it is not possible to compare them aurally.

Conceptually, the mere fact that the earlier mark is a winged device does not result in any similarity to the contested sign’s figurative element depicting the aeroplane. Admittedly, the aeroplane has wings. Nevertheless, this concept will not be discerned individually as the public will perceive the aeroplane as a whole. For the part of the public who recognises the hourglass in the earlier mark and/or for those consumers who attach some meaning to the contested sign’s word ‘DOGFIGHT’, these aspects account for further conceptual differences between the signs. The non-distinctive element, ‘SINCE 1919’, is unable to establish any difference though.

It is concluded that the signs are conceptually dissimilar.

As the signs do not coincide in any element, they are dissimilar overall.

2. Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the signs is a condition for a finding of likelihood of confusion. Since the signs are dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

This finding would still be valid even if the earlier trade mark were to be considered as enjoying a high degree of distinctiveness. Given that the dissimilarity of the signs cannot be overcome by the highly distinctive character of the earlier trade mark the evidence submitted by the opponent in this respect does not alter the outcome reached above.

Given that the opposition is not well founded under Article 8(1)(b) EUTMR it is unnecessary to examine the evidence of use filed by the opponent.

REPUTATION – ARTICLE 8(5) EUTMR

Based on Article 8(5) EUTMR, the opponent claims that the earlier mark is reputed in the European Union in relation to horological and chronometric instruments.

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08, & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not expressly claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

The signs

The signs have already been compared above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR. As the signs do not coincide in any element, it is considered that they are dissimilar.

As seen above, identity or similarity between the signs is a requirement for the opposition to be successful under Article 8(5) EUTMR. Since the signs are clearly dissimilar, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled. Therefore, the opposition must be rejected insofar as it is based on this ground. It follows that it is unnecessary to examine the other conditions laid down in Article 8(5) EUTMR (24/03/2011, C-552/09 P, TiMiKinderjoghurt, EU:C:2011:177, § 66).

Consequently, the opposition must be rejected in its entirety.

COSTS

According to Article 85(1) EUTMR, 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 Rule 94(7)(d)(ii) EUTMIR, 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

Michele M. BENEDETTI ALOISI

Solveiga BIEZA

Julie GOUTARD

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 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 720 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) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.