OPPOSITION No B 2 587 510

Meister + Co. AG, Hauptstr. 66, 8832 Wollerau, Switzerland (opponent), represented by Meyerlustenberger Lachenal, 222 Avenue Louise, 1050 Brussels, Belgium (professional representative)

a g a i n s t

An Na Qiu, 2-701, Building 2, Zone 1, Dongdu Garden, Zhongxin Cheng, Longgang District, Shenzhen City, Guangdong Province, China (applicant), represented by Eurochina Intellectual Property, Calle San Mateo, 65 - Local 1 "Llopis & Asociados", 03012 Alicante, Spain (professional representative).

On 08/09/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 587 510 is upheld for all the contested goods, namely:

Class 14: Clock hands [clock- and watchmaking]; clocks; pendulums [clock- and watchmaking]; wristwatches; watch bands; dials [clock- and watchmaking]; watch chains; watches; chronographs; clocks and watches, electric; chronographs [watches].

2. European Union trade mark application No 14 292 403 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 European Union trade mark application No 14 292 403, namely against all the goods in Class 14. The opposition is based on European Union trade mark registration No 2 606 689. The opponent invoked Article 8(1)(b) 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 goods

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

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.

The contested goods are the following:

Class 14: Clock hands [clock- and watchmaking]; clocks; pendulums [clock- and watchmaking]; wristwatches; watch bands; dials [clock- and watchmaking]; watch chains; watches; chronographs; clocks and watches, electric; chronographs [watches].

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.

Contested goods in Class 14

The contested clocks; wristwatches; watches; chronographs; clocks and watches, electric; chronographs [watches] are included in the broad category of the opponent’s horological and chronometric instruments. Therefore, they are identical.

The contested clock hands [clock- and watchmaking]; pendulums [clock- and watchmaking]; watch bands; dials [clock- and watchmaking]; watch chains are parts of clocks and watches. They have certain things in common with the opponent’s horological and chronometric instruments, as they usually have the same producers and consumers. Furthermore, they are complementary to the opponent’s goods. Therefore, they are similar.

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, except clock hands [clock- and watchmaking]; pendulums [clock- and watchmaking]; dials [clock- and watchmaking], which target business customers with specific professional knowledge or expertise, such as watchmakers. The degree of attention will vary from average to high depending on the exact nature, purpose and price of the goods.

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 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. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public.

The earlier trade mark is a figurative mark made up of a highly stylized upper case letter ‘M’ in dark grey. This stylization lies in two additional slightly curved lines where the shorter line is a continuation of a standard descending line attached to the top point of the right vertical arm of the letter and the longer line appears slightly below and emanates directly from the arm. Both lines, the extended typical one and the one below, are in parallel arrangement and end at the bottom edge of the letter ‘M’.

The contested sign is a figurative sign in black consisting of a verbal component and a device. The verbal element of the sign, ‘MAXPRETTY’, is written in standard upper case letters. Above this element there is a rather stylized representation of the letter ‘M’. This letter is essentially composed of two upper case letters ‘M’ which are interconnected. The descending curvy lines of the inner ‘M’ are extended up to the bottom edge of the letter and the top corners of the outer ‘M’ are slightly inclined outwards.

The figurative element of the earlier mark, the highly stylized letter ‘M’, will not be associated with any meaning by English speakers other than the letter ‘M’ and thus its distinctiveness in relation to the relevant goods is normal.

Since the earlier trade mark is only made up of one element, it has no elements that could be considered clearly more distinctive or more dominant (visually eye-catching) than other elements.

The verbal element ‘MAXPRETTY’ of the contested sign is a composite word made up of the English terms ‘MAX’ and ‘PRETTY’. ‘MAX’ is an abbreviation for the word ‘maximum’, which means ‘the most significant, highest, furthest, or greatest thing’ (information extracted from Collins English Dictionary on 08/09/2016 at http://www.collinsdictionary.com/dictionary/english/max). ‘PRETTY’ means ‘pleasing or appealing in a delicate or graceful way’ (information extracted from Collins English Dictionary on 08/09/2016 at http://www.collinsdictionary.com/dictionary/english/pretty). Considering this, it might be presumed that the word element ‘MAXPRETTY’ taken as a whole will be perceived by the English-speaking part of the relevant public as referring to the idea of something being pleasing or appealing to the maximum. Bearing in mind that the relevant goods are clocks and watches and parts thereof, this element is weak for these goods since it is nothing more than the mere combination of two laudatory terms clearly referring to the quality of the goods. For this reason, the impact of this weak element is limited when assessing the similarity between the marks. On the other hand the figurative element of the contested sign has no association with the goods in question and is therefore distinctive to an average degree.

Taking all the above into account it can be concluded that the figurative element of the contested sign is more distinctive than its verbal component.

Further, given that the figurative element of the contested sign overshadows the verbal element of the sign by virtue of its central position and size, it could be also considered as the visually dominant element of the sign.

Visually, the signs under comparison are similar to the extent that they share the distinctive figurative element representing the letter ‘M’ in a highly stylized manner which makes the overall structure of the signs similar to a certain degree. Additionally, the right hand part of this letter in both signs bears striking visual similarities. However, the signs differ in the weak verbal element ‘MAXPRETTY’ of the contested sign; though they also differ in their colouring the difference only lies in shading and as such has a reduced impact.

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

Aurally, the pronunciation of the conflicting signs coincides in the sound of the letter ‘M’ present identically in both signs and it differs in the sound of the letters ‘MAXPRETTY’ which constitute the weak element of the contested sign.

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

Conceptually, reference is made to the previous assertions regarding the meanings of the signs and their elements.

For the English-speaking part of the relevant public, the weak element ‘MAXPRETTY’ in the contested sign represents a conceptual difference. Therefore, they will perceive an average degree of conceptual similarity between the signs on account of the common distinctive figurative element depicting a highly stylized letter ‘M’.

As the signs have been found 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 relevant goods 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

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Accordingly, a greater degree of similarity between the goods and services may be offset by a lower degree of similarity between the marks, and vice versa (see, to that effect, 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 24; 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.

As has been concluded above, the contested goods in Class 14 were found to be identical and similar to those covered by the earlier trade mark.

The signs in dispute are visually, aurally and conceptually similar to an average degree on account of their coincidence in the distinctive figurative element of the highly stylized letter ‘M’, which may also be perceived as the most dominant element in the contested sign.

On the other hand, the differences between the signs lie only in the additional verbal element ‘MAXPRETTY’ of the contested sign which, as already mentioned above in section c) of this decision, is considered to be weak in relation to the relevant goods and, furthermore, is visually less dominant than the normally distinctive figurative element of the sign, highly stylized letter ‘M’. Though the signs differ in their colouring this has almost no impact on the consumer’s perception since it performs only a decorative function in the signs. Further the difference is only due to shading. It follows from the above that consumers will pay less attention to these differing elements than to the more distinctive figurative element of the stylized letter ‘M’, when being confronted with the contested sign.

In this respect it should be pointed out that the contested goods in Class 14 are mostly watches worn around the wrist and clocks which are usually purchased on the basis of the visual perception, since such goods are scrutinised to make sure they match, look good etc. Therefore, the visual perception of the signs in question will generally take place prior to purchase. Accordingly, the visual aspect plays a greater role in the global assessment of the likelihood of confusion. Further to this, given that the contested goods in Class 14 are mostly fairly small size, the visual dominance of the figurative element in the contested sign has an important impact on the perception of the sign as it primarily catches the consumer’s attention. Considering this, the Opposition Division finds that the visual proximity of the normally distinctive figurative elements of the stylized letter ‘M’ in the conflicting signs is significantly important in the present case which offsets the difference produced by the weak distinctive and less visually dominant verbal element ‘MAXPRETTY’ of the contested sign.

In addition, account must be 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).

To sum up and taking into account the abovementioned similarities between the signs in question, normal distinctiveness of the earlier mark and even a degree of attention varying from average to high, the Opposition Division considers that English-speaking consumers may legitimately believe that the contested goods come from the same or economically-linked undertakings.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the English-speaking part of the relevant public and therefore the opposition is well-founded on the basis of the opponent’s European Union trade mark registration No 2 606 689. 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.

It follows from the above that the contested sign must be rejected for all the contested goods.

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 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) and (6) and Rule 94(7)(d)(i) EUTMIR, 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

Simona MACKOVÁ

Martin MITURA

Vanessa PAGE

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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.