OPPOSITION No B 2 875 923

Richemont International S.A., Route des Biches 10, 1752 Villars-sur-Glâne (Fribourg), Switzerland (opponent), represented by Cabinet Germain & Maureau, 12, rue Boileau, 69006 Lyon, France (professional representative)

a g a i n s t

Joyeros 94,S.L. Calle Jose Aguilar 12-Bajo.Izquierda, 46022 Valencia, Spain (applicant), represented by Clarke, Modet y Cía. S.L., Rambla de Méndez Núñez Nº 21-23 5º A-B, 03002 Alicante, Spain (professional representative).

On 30/04/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 875 923 is partially upheld, namely for the following contested goods and services:

Class 14: Horological articles; Chronometric instruments; Jewelry; Paste jewellery [costume jewelry (Am.)]; Precious stones, Symbols or stamps for jewellery.

Class 35: Retailing in shops and via global computer networks of all kinds of jewellery, Costume jewellery and Timepieces.

2. European Union trade mark application No 16 168 122  is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No  16 168 122 for the figurative mark , namely against all the goods and services in Classes 14 and 35. The opposition is based on international trade mark registration No 1 236 162 designating the European Union, for the figurative mark . 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 and services

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

Class 14: Cuff links; tie clips; rings (jewelry); bracelets (jewelry); earrings (jewelry); necklaces (jewelry); broaches (jewelry); key rings of precious metal; timepieces and chronometric instruments; watches; chronometers; clocks (timepieces); watch cases; dials (clock and watch making); movements for timepieces; alarm clocks; watch straps; boxes of precious metal.

The contested goods and services are the following:

Class 14: Alloys of precious metal; Horological articles; Chronometric instruments; Jewellery; Paste jewellery [costume jewelry (Am.)]; Precious stones, Symbols or stamps for jewellery.

Class 35: Retailing in shops and via global computer networks of all kinds of jewellery, Costume jewellery and Timepieces, Advertising; Sales promotion for others; Import and export services; Exhibitions for commercial or advertising purposes; Business management advisory services relating to franchising; All the aforesaid services solely relating to jewellery and horological articles.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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

Chronometric instruments are identically contained in both lists of goods.

The contested horological articles include, as a broader category the opponent’s timepieces and watches. The contested jewellery and paste jewellery [costume jewelry (Am.)]; include, as a broader category the opponent’s rings (jewelry); bracelets (jewelry); earrings (jewelry); necklaces (jewelry); broaches (jewelry). Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested precious stones are raw materials used in the manufacture of jewellery. In principle, the fact that one product is used in the manufacture of another is not sufficient to conclude that the goods concerned are similar. However, precious stones can be obtained in jewellery shops independently of the final good, therefore, the goods under comparison share distribution channels and origin. Moreover, they target the same consumers. Consequently, the goods are considered similar.

The contested symbols or stamps for jewellery are tools used in the manufacture of jewellery. They are similar to a low degree to the opponent’s jewellery items such as, for example bracelets (jewelry); necklaces (jewelry); broaches (jewelry). This is because the goods under comparison could target the same public. It has to be borne in mind that apart from jewellery making professionals, jewellery stamps target also the general public, which can personalise its jewellery stamping different symbols on it. These goods could also be regarded complementary since one cannot make use of the jewellery stamps not having any jewellery items to stamp on.

The same does not apply however to the remaining contested alloys of precious metals. As mentioned above, the mere fact that the contested goods as raw materials are used for the manufacture of, inter alia, the opponent’s goods, is not sufficient in itself to find a similarity between them. They have a different nature (raw or semi-finished materials versus finished goods), purpose and method of use. They are not in competition or complementary thereto. Furthermore, they are directed at different publics (alloys of precious metals at the professionals and the opponent´s goods at the general public) and do not usually share the same distribution channels. They are, therefore, found dissimilar.

Contested services in Class 35

Retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

Therefore, the contested retailing in shops and via global computer networks of all kinds of jewellery, costume jewellery and timepieces; all the aforesaid services solely relating to jewellery and horological articles are similar to a low degree to the opponent’s rings (jewelry); bracelets (jewelry); earrings (jewelry); necklaces (jewelry); broaches (jewelry); key rings of precious metal; timepieces, watches; chronometers; clocks (timepieces).

The contested import and export services; all the aforesaid services solely relating to jewellery and horological articles are not considered to be a sales service and thus cannot be subject to the same arguments as the comparison of goods with retail services.

Import and export services relate to the movement of goods and normally require the involvement of customs authorities in both the country of import and the country of export. These services are often subject to import quotas, tariffs and trade agreements. As they are classified in Class 35, they are considered to relate to business administration. These services do not relate to the actual retail or wholesale of the goods; they would be preparatory or ancillary to the commercialisation of such goods. For these reasons, goods are to be considered dissimilar to import and export services even for those goods. The fact that the subject matter of the import/export services and the goods in question could be the same is not a relevant factor for finding similarity. Therefore, the contested services are dissimilar to the opponent´s goods.

The contested advertising; all the aforesaid services solely relating to jewellery and horological articles consist of providing others with assistance in the sale of their goods or services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. Many different means and products can be used to fulfil this objective. These services are provided by specialist companies, which study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, websites, videos, the internet, etc. Advertising services are fundamentally different in nature and purpose from the manufacture of goods. The fact that some goods may appear in advertisements is insufficient for finding similarity. Therefore, the contested services are dissimilar to the opponent´s goods.

The same applies to to the contested sales promotion for others; exhibitions for commercial or advertising purposes; all the aforesaid services solely relating to jewellery and horological articles when compared with the opponent’s goods. The contested services are dissimilar to the opponent’s goods, as their nature, purpose and usual origin are different and they target a different public. They are not complementary or in competition with one another.

The contested business management advisory services relating to franchising; all the aforesaid services solely relating to jewellery and horological articles provide tools and expertise to enable the applicant’s customers to carry out their business. These services provide businesses with the necessary support to acquire, develop and expand market share. The services include activities such as business research and assessments, cost and price analyses, organisational consultancy and any consultancy, advisory and assistance activity that may be useful in the management of a business, such as advice on how to efficiently allocate financial and human resources, improve productivity, increase market share, deal with competitors, develop new products, communicate with the public, market products, launch new products, etc. These services have nothing in common with the opponent’s goods in Class 14. They have different natures and purposes and they are usually provided by different undertakings. They do not target the same relevant public or use the same distribution channels. Furthermore, they are not complementary or in competition with one another. Therefore, they are dissimilar.

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 and services found to be identical or similar are directed at the public at large or at business customers with specific professional knowledge or expertise (in case of symbols or stamps for jewellery and precious stones).

Given that the general public is more prone to confusion, the examination will proceed on this basis.

The public’s degree of attentiveness may vary, depending on the price and nature of the goods. On one hand the degree of attention may be average for the goods not made of precious metals and stones, while it on the other hand may be higher than average for the items made from precious materials.

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 earlier mark depicts a flower, probably a rose, in black and white, shown from above. Rows of petals are placed around a circular centre; petals getting bigger in each row. The petals are delimited by thick, black lines and are white inside. This figurative element is distinctive for the goods in question. The Opposition Division does not agree with the applicant that it will be clear for the consumers that the earlier mark consists of a depiction of a flower other than a rose. There are many kinds of roses that in different phases of blossoming could be more open than others. It is, therefore, very probable that many of the consumers will actually associate this depiction with a rose.

The contested mark is also a depiction of a flower, also probably a rose, in black and white colours, in top view. Rows of petals are placed around the bud, with petals in each row larger than in the former. The petals are black inside but are delimited by white thick lines. This depiction of a flower is distinctive for the goods and services in question.

Visually, the signs coincide in being representations of flowers, probably roses, from the same top viewpoint. They are depicted in the same colours – black and white, with the same number of rows of petals around the central part of the flowers. Consequently, they give a similar overall visual impression despite the slight differences in the shape of the petals and different use of colours - white petals with black outlines in one case and the opposite in the other.

Therefore, the signs are similar to an average degree.

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

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived as flowers, probably roses, the signs are conceptually identical.

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 goods and services 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

According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 29). The likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (see Canon, § 16).

The contested goods and services are partly identical, partly similar to varying degrees and partly dissimilar to the opponent’s goods.

As explained above, the signs are visually similar to an average degree. The visual similarity is reinforced by their conceptual identity.

The degree of attention paid by the relevant public during the purchase of the goods and services varies from average to higher than average. The degree of distinctiveness of the earlier mark is normal.

The fact that the signs have slightly different graphic depictions does not prevent them from producing similar impressions. Both of the signs are black and white roses viewed from above. Even though the shapes of the petals and the use of colours forming them differ slightly, their overall similarity remains. It should be kept in mind that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them. Based on this, the consumers might believe that the conflicting goods and services come from the same undertaking or economically-linked undertakings.

Even if part of the public might pay special attention during the purchase, the fact that the signs have significant similarities, together with the fact that these similar signs cover identical and similar goods and services, might lead consumers to think that the such goods and services come from the same undertaking or economically-linked undertakings. Accordingly, even if the degree of attention might be higher than average in relation to some of the goods and services involved, this will not be sufficient to prevent such confusion and/or association under the present circumstances.

The applicant stated that it is common in the jewellery sector to use flowers as trademarks and so it is the precise representation of a flower that should be regarded important. It submitted evidence consisting of printouts from the Google website showing jewellery, some of which had flower representations. In this regard it has to be stated that the evidence the applicant submitted only proves a common fact that flowers are popular shapes for jewellery. It does not, however, prove a common practise when it comes to trade marks in the jewellery sector. Nonetheless, the Opposition Division agrees with the applicant that the opponent cannot monopolise the concept of a flower – just a specific depiction. However, in this case the particular depictions of flowers under comparison give an overall similar impression.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on part of the public and therefore the opposition is partially well founded on the basis of the opponent’s international trade mark registration No 1 236 162 designating the European Union. It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to those of the earlier trade mark. The opposition is also successful insofar as the goods and services that are similar to a low degree are concerned, as the degree of similarity of the signs is clearly enough to outweigh the low degree of similarity of those goods and services.

The rest of the contested services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these services cannot be successful.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Tu Nhi VAN

Marta Maria CHYLIŃSKA

Alexandra APOSTOLAKIS

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.