OPPOSITION No B 2 938 325

Loewe S.A., Calle Goya 4, 28001 Madrid, Spain (opponent), represented by Gaëlle Mouton, Département Propriété Intellectuelle, 2, rue du Pont Neuf, 75001 Paris, France (employee representative)

a g a i n s t

Loewe Technologies GmbH, Industriestr. 11, 96317 Kronach, Germany (applicant).

On 22/03/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 938 325 is upheld for all the contested goods.

2. European Union trade mark application No 16 323 818 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 320.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 16 323 818 for the word mark ‘LOEWE’, namely against all the goods in Classes 8, 14, 16 and 20. The opposition is based on European Union trade mark registrations No 152 405, No 13 035 431 and No 358 762, all for the word mark ‘LOEWE’. The opponent invoked Article 8(1)(b) EUTMR in relation to all the earlier rights. The opponent also invoked Article 8(5) EUTMR in relation to the goods in Class 18 of earlier European Union trade mark registration No 152 405.

As a preliminary remark, European Union trade mark application No 16 323 818 was partially rejected following a decision on opposition proceedings No B 2 937 046 of 29/06/2018. In this regard, the mark applied for was rejected, inter alia, for all the goods in Class 8. Accordingly, the present opposition will proceed in relation to the remaining contested goods in Classes 14, 16 and 20.

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.

a) The goods

The goods on which the opposition is based are, inter alia, the following:

Earlier EUTM registration No 152 405

Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics; toiletries; hair lotions; dentifrices.

Class 14: Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and chronometric instruments.

Earlier EUTM registration No 13 035 431

Class 20: Furnitures, namely armchairs, office armchairs, benches, chairs [seats], dining chairs, office chairs, office seats, divans, settees, sofas, stools, beds, cabinet work, chests of drawers, desks, tables, dining tables, night tables, office tables, cabinets, display cabinets, racks, plate racks, bookcases, wardrobes, shoe cabinets, furniture chests, mirrors; all the aforesaid goods being made of wood or wood substitutes, metal, bamboo, cork, corozo, rattan, unworked or semi-worked, reed, unworked or semi-worked, horn, unworked or semi-worked, ivory, unworked or semi-worked and substitutes for all these materials, or of plastics; cushions, pads.

Earlier EUTM registration No 358 762

Class 16: Goods made of paper, or of cardboard, namely bags or paper for packaging, bags or boxes made of paper or of cardboard, hat boxes of cardboard, watercolours, drawings, theatre sets, architects' models; printed matters in particular posters, albums, atlases, pamphlets, geographical maps, postcards, catalogues, labels not of textile, printed matters, books, newspapers, periodicals, printed publications, magazines, agendas, ribbons; bookbinding material; photographs; stationery namely, pads, drawing pads, blotters, writing books, calendars, note books, envelopes, writing paper, indexes; adhesives for stationery or household purposes; artists' material; paint brushes; typewriters and office requisites (except furniture) namely writing slates, cases for seals, inking pads, letter trays, paper knives, pencils, inkstands, inkwells, paperweights, pencil holders, penholders, writing pads, pens, balls for ball-point pens, nibs for fountain pens; instructional and teaching material (except apparatus); plastic materials for packaging; playing cards; printers' type; printing blocks.

The contested goods are the following:

Class 14: Key rings and key chains, and charms therefor; charms for key rings; key fobs of precious metals; key fobs of common metal; key fobs, not of metal; time instruments; wristwatches; watches made of precious metals or coated therewith; watches for outdoor use; wristwatches with gps apparatus; wristwatches with pedometers; watches containing an electronic game function; watches with the function of wireless communication; watches containing a game function; watches incorporating a telecommunication function; watches incorporating a memory function; clocks and watches; automatic watches; dress watches; digital clocks; digital clocks incorporating radios; digital time indicators having temperature displays; digital watches with automatic timers; clocks and watches, electric; digital clocks being electronically controlled; women's watches; horological articles; miniature clocks; watch straps of plastic; metal watch bands; watch straps of synthetic material; clocks incorporating radios; alarm clocks; apparatus for sports timing [stopwatches]; chronometric apparatus and instruments; jewellery boxes and watch boxes; cases for watches and clocks; cases [fitted] for clocks; presentation boxes for horological articles; presentation cases for horological articles; watch pouches; housings for clocks and watches.

Class 16: Printed matter; books; works of art and figurines of paper and cardboard, and architects' models; pictures; aquarelles; graphic representations; graphic art prints; graphic drawings; etchings; silk screen prints; paintings [pictures], framed or unframed; art prints; stationery and educational supplies; office machines; stamp canceling machines; addressing machines; document destroyers [office machines]; document laminators for office use; electronic and electric franking machines; electric pencil sharpeners; electric staplers for offices; stapling guns (electric -) for stationery use; office labeling machines; office perforators; envelope sealing machines, for offices; mimeograph apparatus and machines; paper shredders for office use; computer game instruction manuals; computer software operating manuals; printed greeting cards with electronic information stored therein; instruction manuals for music synthesizers; manuals for instructional purposes; computer hardware users guide; pamphlets; computer magazines; prints; printed matter for instructional purposes; flyers; printed brochures; printed research reports; printed emblems [decalcomanias]; printed periodicals; printed teaching materials; instructional manuals for teaching purposes; home shopping catalogs; informational letters; information booklets; promotional publications; advertising pamphlets; periodicals.

Class 20: Displays, stands and signage, non-metallic; display boards made of plastics; display panels for exhibition environments; display cases; display units for promotional purposes; furniture and furnishings; storage modules [furniture]; wall-mounted tool racks; cupboard units; credenzas [furniture]; audio racks [furniture] for use with audio equipment; furniture for displaying goods; bathroom fittings in the nature of furniture; computer furniture; computer cabinets [furniture]; fitted furniture; glass furniture; glass cabinets; wood surrounds [furniture] for electronic apparatus; wooden furniture; wardrobe lockers; kitchen cabinets; kitchen units; consignment shelving [furniture]; furniture; furniture made from substitutes for wood; slatted furniture; furniture of metal; racks being furniture of metal; furniture made of rattan; furniture made of steel; upholstered furniture; racks; furniture cabinets; seating furniture; furniture chests; box shelves; wall shelves furniture; statues, figurines, works of art and ornaments and decorations, made of materials such as wood, wax, plaster or plastic, included in the class.

An interpretation of the wording of the lists of goods is required to determine the scope of protection of these goods.

The terms ‘in particular’ and ‘such as’, used respectively in the opponent’s and the applicant’s list of goods, indicate that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

However, the term ‘namely’, used in the opponent’s list of goods to show the relationship of individual goods to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed.

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 time instruments are synonyms of the opponent’s horological and chronometric instruments. Therefore, they are identical.

The contested jewellery boxes are similar to the opponent’s jewellery, since they usually have the same producer, relevant public and distribution channels. Furthermore, they are complementary.

The contested watch straps of plastic; metal watch bands; watch straps of synthetic material are similar to the opponent’s time instruments since they usually have the same producer, relevant public and distribution channels. Furthermore, they are complementary.

Based on the natural meaning of the goods in comparison, also supported by the classification Harmonised Database (HDB¹), the remaining contested goods are or fall under at least one of the following broad categories:

(1) ‘key rings and key chains, and charms therefor’ (e.g. charms for key rings, key fobs of precious metals);

(2) ‘time instruments’ (e.g. wristwatches, clocks and watches);

(3) ‘watch boxes’ (e.g. cases for watches and clocks, watch pouches).

Accordingly, the contested goods that fall under the above mentioned category (2) are included in the broad category of the opponent’s horological and chronometric instruments. Therefore, they are identical.

The contested goods that fall under the above mentioned category (3) are similar to the opponent’s horological and chronometric instruments, since they usually have the same producer, relevant public and distribution channels.

The contested goods that fall under the above mentioned category (1) are similar to a low degree to the opponent’s jewellery, since they usually have the same producer, relevant public and distribution channels.

Contested goods in Class 16

Printed matter; works of art and figurines of paper and cardboard, and architect’s models; stationery supplies are identically contained in both lists of goods (albeit using slightly different wording).

The contested educational supplies include, as a broader category, the opponent’s instructional and teaching material (except apparatus). 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 pictures are identical to the opponent’s photographs, since they are synonyms.

Based on the natural meaning of the goods in comparison, also supported by the classification Harmonised Database (HDB), the remaining contested goods in this class fall under at least one of the following broad categories:

(1) ‘printed matter’ (e.g. books, prints, periodicals);

(2) ‘works of art and figurines of paper and cardboard’ (e.g. graphic drawings);

(3) ‘office machines’ (e.g. addressing machines, electric pencil sharpeners).

Accordingly, the contested goods that fall under the above mentioned category (1) and (2) are included in the broad category of the opponent’s printed matters. Therefore, they are identical.

The contested goods that fall under the above mentioned category (3) are at least similar to a low degree to the opponent’s stationery, since they have the same relevant public and distribution channels.

Contested goods in Class 20

As a preliminary note, the Opposition Division will take into account the specification contained at the end of the opponent’s list of goods in Class 20, namely all the aforesaid goods being made of wood or wood substitutes, metal, bamboo, cork, corozo, rattan, unworked or semi-worked, reed, unworked or semi-worked, horn, unworked or semi-worked, ivory, unworked or semi-worked and substitutes for all these materials, or of plastics, although it will not be reproduced in the following comparisons.

The contested furniture; furniture and furnishings include, as broader categories, the opponent’s furnitures, namely armchairs; cushions. 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 furniture made from substitutes for wood; furniture of metal include, as broader categories, the opponent’s furnitures, namely armchairs, all the aforesaid goods made of wood substitutes or metal. 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 displays, non-metallic; display units for promotional purposes; furniture for displaying goods overlap with the opponent’s furnitures, namely display cabinets. Therefore, they are identical.

The contested stands and signage, non-metallic; display boards made of plastics; display panels for exhibition environments; display cases; are similar to a high degree to the opponent’s furnitures, namely display cabinets, since they have the same nature and purpose. Furthermore, they usually have the same producer, relevant public and distribution channels.

The contested storage modules [furniture]; wall-mounted tool racks; cupboard units; credenzas [furniture]; audio racks [furniture] for use with audio equipment; bathroom fittings in the nature of furniture; computer furniture; computer cabinets [furniture]; fitted furniture; glass furniture; glass cabinets; wood surrounds [furniture] for electronic apparatus; wooden furniture; wardrobe lockers; kitchen cabinets; kitchen units; consignment shelving [furniture]; slatted furniture; racks being furniture of metal; furniture made of rattan; furniture made of steel; upholstered furniture; racks; furniture cabinets; seating furniture; furniture chests; box shelves; wall shelves furniture fall under the broad category of ‘furniture and furnishings’ and therefore they are, if not identical, at least similar to a high degree to the opponent’s furnitures, namely chairs [seats], cabinets, display cabinets, tables, racks, wardrobes, since they have at least the same nature and purpose. Furthermore, they usually have the same producer, relevant public and distribution channels.

The contested statues, figurines, works of art and ornaments and decorations, made of materials such as wood, wax, plaster or plastic, included in the class are similar to the opponent’s furnitures, namely desks, tables, display cabinets, racks, plate racks, bookcases in Class 20. It is common for furniture stores to offer for sale various types of works of art (e.g. statues, figurines, ornaments, etc.) to enable purchasers of furniture to buy them at the same time to achieve an accomplished and harmonious decorative outfit. In addition, these goods are commonly advertised together in the same catalogues and specialist interior design magazines. Therefore, consumers may believe that the responsibility for the production of these goods lies with the same undertaking, they are directed at the same public and often share the same distribution channels.

b) The signs

LOEWE	LOEWE
Earlier trade marks	Contested sign

The signs are identical.

c) Global assessment, other arguments and conclusion

The signs were found to be identical and some of the contested goods, as established above in section a) of this decision, are identical. Therefore, the opposition must be upheld under Article 8(1)(a) EUTMR for these goods. Furthermore, the remaining contested goods were found to be similar to varying degrees to those covered by the earlier trade marks. Given the identity of the signs, and regardless of the degree of attention of the public and the distinctiveness of the signs at issue, there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR and the opposition must also be upheld for these goods.

Therefore, the opposition is well founded on the basis of the opponent’s earlier trade mark registrations. It follows that the contested trade mark must be rejected for all the contested goods.

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 (5) EUTMR invoked in relation to earlier European Union trade mark registration No 152 405 for goods in Class 18.

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. In the present case, the opponent did not appoint a professional representative within the meaning of Article 120 EUTMR and therefore did not incur representation costs.

The Opposition Division

Martina GALLE

Marta GARCÍA COLLADO

Carlos MATEO PÉREZ

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.