OPPOSITION No B 2 728 213

ICE IP S.A., rue des Tilleuls, 3, 8832 Rombach, Luxembourg (opponent), represented by Petosevic B.V.B.A., Avenue Louise 523, 1050 Brussels, Belgium (professional representative)

a g a i n s t

Zenga Incorporated, 9040 Telstar Avenue, Suite 109, El Monte 91731, United States of America (applicant), represented by Urquhart-dykes & lord LLP, Arena Point Merrion Way, Leeds LS2 8PA, United Kingdom (professional representative).

On 10/08/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 728 213 is upheld for all the contested goods.

2. European Union trade mark application No 15 073 323 is rejected in part.

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

REASONS:

The opponent filed an opposition against part of the goods of European Union trade mark application No 15 073 323, namely against goods in Class 14. The opposition is based on, inter alia, European Union trade mark registration No 11 572 435. 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.

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 11 572 435.

1. The goods

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

Class 14: Watches, watch straps, watch chains, watch casings, caskets and cases for clock- and watch-making, clocks, alarm clocks, stopwatches, chronographs, ornaments (jewellery), charms, medals, medallions, insignias and amulets, rings, earrings, bracelets and brooches, chains and necklaces, pearls (jewellery), figurines of precious metal, cuff-links, tie-pins, hat-pins, hat ornaments, ornaments for footwear; Novelty key rings.

The contested goods are the following:

Class 14: Chronoscopes; Jewellery.

Contested goods in Class 14

The contested chronoscopes are identical to the opponent’s watches.

The contested jewellery includes, as a broader category, the opponent’s charms. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

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 are directed at the public at large. The degree of attention is considered to vary between average to high.

3. The signs

ICE
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 German-speaking part of the relevant public.

The earlier mark is a word mark consisting of the word ‘ICE’.

The contested figurative mark consists of the words ’KING’ and ‘ICE’, in bold capital letters, clearly separated by a figurative device of a lion´s head bearing a crown.

The applicant submits that the common element ‘ICE’ is descriptive in respect of eye-catching jewellery, as it is an informal term for diamonds. While it is acknowledged that a part of the English-speaking public may perceive it in this way, it has no meaning for the relevant public in relation to the goods, and is, therefore, distinctive.

The German-speaking public will understand the English word ‘KING’ in the sense of denoting a leader of the pack (http://www.duden.de/suchen/dudenonline/king), as opposed to an actual regent, and the General Court has recognised that the word is understood as an indicator of superiority in marketing-speak in Germany (20/09/2011, T-99/10, TOFUKING, EU:T:2011:497 at para. 26; 13/12/2011, T‑61/09, SCHINKEN KING, EU:T:2011:733). It is, therefore, non-distinctive because it will be seen as a laudatory element.

The purely laudatory content of the non-distinctive verbal element ‘KING’ is reinforced by the figurative device which separates the verbal elements. The applicant itself acknowledges that the crown-bearing, lion’s head (“king” of the jungle) gives the sense that the mark represents the best of its kind, or a royal standard. As such, it adds to the concept of quality and constitutes a further non-distinctive element in respect of goods which have a certain cachet, or which are aspirational or exclusive.

Neither of the marks have an element which is more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the distinctive element “ICE”, which is the sole element of the earlier mark, entirely contained in the contested sign.

They differ in the verbal element “KING” of the contested sign, together with its figurative device of a crown-bearing lion’s head. These latter elements are non-distinctive.

Therefore, the signs are similar at least to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters “ICE”, present identically in both signs, which is distinctive. The pronunciation differs in the sound of the word “KING” of the contested mark, which has no counterpart in the earlier sign and which is non-distinctive.

Therefore, the signs are similar to at least an average degree.

Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territory, the weak elements ‘KING’, and the lion-head figurative device included in the contested sign, will be associated with the meaning explained above. To that extent, the signs are not conceptually similar.

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 claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence within the time limit for substantiation in order to prove such a claim. On 26 January 2017, the opponent made submissions in this regard. The evidence filed cannot be taken into account as evidence of enhanced distinctiveness, because it was received after the date of 18 November 2016, set by the Office for the opponent to submit evidence of the existence, validity and scope of protection of its mark.

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 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.

As has been concluded above, the contested goods are identical to goods covered by the earlier trade mark. For the German-speaking part of the public, the signs are visually and aurally similar to at least an average degree. Furthermore, the earlier mark is considered to enjoy a normal degree of distinctiveness, and is entirely contained in the contested mark.

The applicant argues that its mark enjoys an enhanced level of distinctiveness abroad, and that this renown also extends to the European Union as a result of internet-based brand awareness, market expansion and celebrity endorsement. Evidence was submitted to this effect. However, the right to an EUTM begins on the date when the EUTM is filed and not before. From that date on, the EUTM has to be examined with regard to opposition proceedings. When considering whether or not the EUTM falls under any of the relative grounds for refusal, events or facts relating to the status or perception of a EUTM before the filing date of the EUTM are irrelevant. Therefore, the applicant’s arguments in that regard must be set aside.

Considering all the above, a likelihood of confusion on the part of the German-speaking part of the general public, demonstrating even a relatively high degree of attention, may not be ruled out. 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.

As the earlier right European Union trade mark registration No 11 572 435 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 right invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 11 572 435. It follows that the contested trade mark 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

Ana Muñiz RODRIGUEZ

Keeva DOHERTY

Oana-Alina STURZA

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.